Mark Mawhinney – General Manager - Isis Enterprise - Université d'Oxford
Paul Whyte – Senior Consultant - Isis Enterprise - Université d'Oxford
Frédéric Ooms – Senior Patent & Licensing Manager - Sopartec sa

Universities, a key actor in innovation stimulation 

Universities are seen as key actors in stimulating innovation and therefore fostering economic growth of any society. During the recent years, government agencies encouraged universities to interact more with industries. Public research funding became increasingly dependent on how inventions are protected and how research done at university is fueling scientific innovation.

In the mind of many academics, thinking about patents and commercial use of them is considered as a threat for open dissemination of scientific knowledge (delay or prohibition of publications) and fear that efforts devoted to this activity will weaken the scientific focus of the research. Recent studies have shown that performing research with an entrepreneurial focus creates a virtuous circle and increases the number of publications without affecting the quality of the publication involved.

Patenting and licensing activities at UCL - A fresh look from Oxford Technology Transfer

In december 2008, Sopartec invited Isis Enterprise, the Technology Transfer Office (TTO) of Oxford University, to undertake a site review of the patenting and licensing activities at the Université catholique de Louvain. The aim of the project was to gauge the views of stakeholders to ensure that the patenting and licensing activities conducted at the UCL are seen in a positive light and to highlight areas that could be improved.

In particular,  a major objective of the survey was to make recommendations on how to increase the number of invention disclosures at the UCL, with the aim of achieving 100 invention disclosures per year. This reflects a common perception among senior staff at UCL that only 20% of potential deal flow had been achieved, which leaves room for improvement. UCL is indeed a globally ranked University with a position of 123 in the Times Higher Education Supplement sponsored tables and has sufficient research and resource to have a good pipeline of opportunity to reach this objective.

 Over a 3 day period, we conducted a series of interviews with a wide range of stakeholders including academics and TTO staff from the organizations supporting technology transfer at UCL  (ADRE and Sopartec). A series of common themes emerged during the course of the interviews some of which are summarized below.

  

Think protection before publications

One  practice that may reduce commercial opportunity is scientists’ tendency to publish before protecting their results.  This may prevent effective patent protection and before making a public disclosure the potential to file a patent needs to be considered.  We all understand that academics need to publish but by doing so without considering the potential for patent protection, the opportunity for obtaining a patent may be lost.  The process of assessing the invention and obtaining patent protection will not normally delay publication by more than a few weeks and an early dialogue between the scientist and the technology transfer office is essential for streamlining this process and avoiding undue delay.

It is worth to mention that an invention disclosure can be extremely valuable even without a patent in mind (licensing of know-how, potential for cross-functional research, …). The potential of non-patentable IP such as computer software and biological materials such as cell lines also offer alternative commercialization approaches.

 

The patenting and commercialization process at the UCL

A point that arose from the interviews was that academics are looking for a simplification of procedures and more support, particularly when handling the  administrative burden of filing patent. It was also often not clear at which stage of the research should they start thinking about protecting their results and who they should contact. There was also a lack of understanding among academics on the process of commercialization and how this was managed at the university – this  emphasized the need for a TTO educational program for academics, the need for the TTO to provide more comprehensive support and the need to clarify TTO procedures, process and roles.

 

Improving the patenting and licensing activities

Following these findings, the university has agreed that the staff involved in the patenting and commercialization activities should begin  to introduce the following measures:

  • Simplification of  procedures to enable the TTO to offer the academics the quality of  support that they ask for and in particularly to simplify, clarify and reduce the time required by an academic when making an invention disclosure. A simple invention disclosure form is available from now on request. A UCL researcher with an innovative idea can either fill in the form directly or contact the TTO. A 1 hour meeting is usually the best way for the TTO to understand the innovative aspects and the competitive advantages of the research and to define the following steps together with the researcher.
  • Introduction of a more open management style that clarifies and makes explicit individual roles, responsibilities and processes.  This will be supported by the preparation of presentations, written materials and by workshops and seminars aimed at educating, supporting and informing researchers about the patenting and commercialization process. Presentation material is available and first meetings have already been organized with EPL (Prof. Denis Flandre). Any interested UCL lab or department can contact the TTO to setup a dedicated session.
  • Set-up a lighthouse to more actively engage academic staff and communicate  the activities, roles and support offered by the TTO staff (ADRE and Sopartec). Information is being finalized and will be communicated soon through TTO web pages, newsletters (Sopartec News) and existing forums (e.g. presentation of CD3 funding opportunity for life science research at Sopartec info session). A recent initiative from Prof. Benoît Macq (Groupe Consultatif de l’Innovation) will also contribute to achieve this goal.

Finally, we want to warmly thank all the people that accepted to participate to the site review of Isis Enterprise and especially the pro-rector Roland Keunings for his supportive action.

For further information contact moc-cetrapos+smoo-f

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