The Government green paper ‘Building our Industrial Strategy’, published in January 2017, notes that the UK needs to improve its approaches to research commercialisation. Continuous improvement in knowledge exchange, including commercialisation, is the focus of the HEFCE-universities Knowledge Exchange Framework programme.
We looked thoroughly at one aspect of commercialisation, the creation of spin-off companies based on university intellectual property (IP), in the McMillan review of technology transfer which reported last September. However, spinning off companies is a small part of IP exploitation.
As part of our framework programme, we are now compiling evidence on good practices in the exploitation of IP in research contracts, as well as in investing in the knowledge exchange that supports research and development partnerships (which will be the subject of a separate blog post next week, reflecting views of PraxisUnico members at their annual conference in Sheffield on 15 and 16 June).
To understand the state of play in research contracting, we talked to the Association of Research Managers and Administrators (ARMA), which held its annual conference in Liverpool on 6 and 7 June.
Poor contracting is a waste of time and resources for universities and their research partners, and hence something that ARMA is already engaged in improving, for example in issuing revised templates for research agreements. We asked university experts whether there are opportunities to do more, particularly where closer working between universities, their partners and national funders or policy-makers could help.
We discussed whether national, standard principles, templates or toolkits might help to cut time on negotiating individual agreements, rather than starting from first principles each time. This approach was adopted in development of the Lambert toolkit, arising from a 2003 review of university-business links.
But what is most useful, given that universities and businesses will all vary – the templates, or the principles behind the templates? Are there particular areas that always tend to be difficult to resolve, and how might we focus more effort on explaining these areas, or provide better tools and techniques to help resolve differing positions?
Examples we discussed with ARMA included valuing early-stage IP, indemnities and warranties, and reasonable expectations on providing assurances on the ownership of background IP.
Does it help if principles or templates are owned by a body other than the contracting parties (like the Lambert toolkit, which has been updated by the Intellectual Property Office)? Parties to contracts might then see the templates as a more neutral starting point.
We discussed in more depth with ARMA the particular challenges for the university side in negotiations. A number of features that cannot be changed influence the positions of universities in contracting, one important example being the charitable status of universities.
As in most countries, IP from publicly funded research in the UK is conferred on universities so that they may seek the optimum public benefits. Charities are set up to maximise their public benefits, which for universities includes their roles to develop and disseminate knowledge through research, teaching and knowledge exchange. This includes open routes to dissemination, as well as conferring rights on private partners when this is the best route to exploitation.
A second feature of universities is that they are publicly funded, but autonomous. Universities need to pay attention to full economic costing to ensure sustainability. This means they must have regard to cost recovery, but at the aggregate not the specific project level.
As a result, universities must determine their priorities for co-investing in research projects to meet their research objectives, and hence the appropriate arrangements for IP ownership. This means that the positions of universities will differ.
Could it then be helpful if partners outside HE, such as businesses, were provided with better explanations on these distinctive features of universities, so they do not come as a surprise at the contract initiation stage?
University experts noted that business partners vary in their approaches to contracting, just as universities do. Businesses might benefit from learning from each other about approaches that meet business needs, and have been found to work for universities. In the United States, universities and businesses work together on developing mutual understanding of contracting issues.
In relation to building mutual understanding between the parties to research contracts, we also discussed at ARMA whether mobility schemes between university professionals and their equivalents in industry could help.
We have published an initial analysis of all the evidence we have compiled to date. Working with ARMA, the Association for University Research and Industry Links and PraxisUnico, we are seeking further evidence and views from university practitioners to inform the next steps in the Knowledge Exchange framework programme.
We welcome papers, weblinks or views as responses to our survey. These should be provided by Monday 4 September.