I recently came across the 2012 final report on Collaborations between the Public and Private Sectors: The Role of Intellectual Property, by the Australian Government Advisory Council on Intellectual Property. What a revealing read, indicating that the motivating factors for universities and university researchers lead to less than ideal rates of collaboration.
Well at least that is the key message that I took from it.
Where’s the Motivation? Performance metrics for Universities do not take into account engagement with industry (“impact”). Number of journals published and securing grant funding has the greatest influence on career advancement. The word impact can mean many things – I believe that it should mean the overall uptake of your “knowledge” in industry through innovation transfer as well as engagement with industry through consulting. To be able to show that an innovation developed at a University is actually being used in a product, process or service.
Excellence in Research Australia (ERA) announced that “impact” will be introduced into the next round in 2015. This poses the question, what will “impact” mean for the ERA when it’s added as a factor?
In the innovation and knowledge transfer world licensing and formation of start-up companies are the main avenues for creating “impact” (bluebox FAQ). To enable such activity it is often the case that a clear commercial advantage and propriety intellectual property position are required. Giving any potential industry partner or licensee the competitive advantage in the marketplace. Licensing innovations is the bread and butter of innovation and knowledge transfer.
More often than not, Intellectual Property (IP) ownership clauses are held responsible for delays in collaboration and licensing agreement negotiations. There is a misnomer out there that you must own the IP to be able to use it commercially, this is incorrect. A license to commercial rights allows one to exploit the IP commercially for a stated business purpose. I have been involved in projects where companies are adamant that they need to own the IP, however once explained they are quite happy for the IP to be owned by the research institution, as long as the company has rights to use and exploit the IP for their particular business purpose.
Some innovations are applicable to more than one market, and therefore to maximise the use you can license to multiple parties for different business purposes (field of use). Additionally some companies are only active in one state or country and therefore to maximise the impact of the innovation you may be able to restrict the license to a territory. Thus allowing one to licence to a company in a different country for the same purpose.
At Universities the innovations that we often come across would not even be considered by companies or investors – as they are very early stage and considered too risky! So another main aspect at bluebox that we must consider is risk management. De-risking early stage IP was also mentioned in this report, one way that we do approach this at bluebox is through the bluebox Proof-of-Concept fund…. which is a good topic for a future blog – keep an eye out!
If you are interested in learning more, please do not hesitate to contact me at email@example.com