5 min readThe Economy of Open: Easier Access to Academic IP
London, UK – Technology commercialization is a lengthy process. It takes on average 12 years to bring a drug to market and approximately 17 years to integrate a scientific discovery into physician practice.
Meanwhile, an average length of a research grant is 5 years. Sooner or later, there comes a point when a discovery needs to be picked up by an industry partner who will turn the knowledge into a product and bring it to market.
The responsibility for knowledge transfer falls onto the shoulders of a university technology transfer office. Traditionally, a TTO will select research outcomes with the most potential, apply for patents to protect the knowledge and, ultimately, negotiate the terms of licencing the IP to businesses.
Sounds easy and straightforward, doesn’t it? The truth is, it is not.
Obtaining a patent takes up to several years and the costs of protecting it in court often exceed the profit gained from licencing the patent to third parties. This effectively screens out all the early stage or smaller scale research discoveries. At the moment, 80% of all intellectual property created at the universities worldwide never finds its way onto the market.
Moreover, a researcher wishing to apply for a patent is not allowed to disclose details of their study until the patent has been granted.
“An obvious alternative for a university would be to publish all the intellectual property for free. This is how the discussion began at a research strategy meeting at the University of Glasgow,” recalls Dr. Kevin Cullen, CEO of UNSW Innovations at The University of New South Wales, Australia, and former Director of Research & Innovation at the University of Glasgow, UK.
“But this would mean that if any university ever created a cure for cancer, that cure would never make it to the market. Without a protected proprietary position, no company could justify investing in a new technology.”
So how could one simplify the intellectual property agreement between a business and a university, while at the same time allowing the company to retain exclusive access to the technology?
In an attempt to solve this question, the Easy Access IP scheme was born. At the heart of it, is a one-page proprietary license agreement, which allows a company to make use of the IP generated by the university at no cost.
This is a drastic step away from the traditional patent licence where an industry partner is required to pay royalty fees in exchange for the four basic patents rights: the right to manufacture with, to use, to sell, or to advertise for sale of a patented technology.
“We needed to ensure that we had in a place a license that would be easy enough for companies to use but robust enough to protect the university,” says Dr. Cullen.
The short, one-page document is also designed to help facilitate negotiations.
“We feel that it is unnecessary and inappropriate to start a relationship with a 30+ page license agreement,” reads the statement on the Easy Access IP main page.
The Easy Access IP scheme was launched at the University of Glasgow in 2010. Since then, another 25 organizations, such as the University of Copenhagen, CERN and the German Cancer Research Center (DKFZ), have joined the initiative globally.
In order to apply for an Easy Access IP license, a company must submit a Stament of Intent, explaining how they are planning to implement and what economic benefit their work will bring to the society. The technology transfer office at the university will screen the applications and sign an exclusive agreement with a single most suitable partner.
The key ten clauses of the Easy Access IP agreement are:
- The licensee is granted an exclusive royalty-free worldwide non-transferable licence to use, make, develop, sell and commercially exploit the technology.
- The university reserves the right to continue independent research on the project and using technology for teaching purposes.
- The university’s contribution to the technology must be acknowledged.
- The licensee should put reasonable efforts to use, develop and exploit the technology.
- During the first three years, the licensee must submit to the university annual written progress reports on use and economic benefit of the technology.
- The university retains the right to terminate the agreement within the first three years, if the technology has not been used in accordance with the Statement of Intent.
- The cost of prosecution and maintenance of any IP protection must be agreed upon between the university and business. The university is under no obligation to prosecute or maintain the IP.
- The university gives no warranty in relation to the technology.
- The university is not to be liable to the licensee for any potential losses carried by the licensee.
- The agreement is governed by the applicable law of the country where the license has been issued.
“The initial response to the launch was hugely positive,” says Dr. Cullen. “This may have come as a surprise to many people, who were afraid that academics would interpret this move as a suggestion that the university technology doesn’t have any value, because it is given away for free.”
However, the initiative appears to have tapped into the culture and ethos of the academic community.
“Our message played much more positively within academia than the idea of taking a research development, protecting it and then seeking to make money from the patent. Most researchers would like to see their work make a difference in the world but most researchers are not that interested in the process of commercialization of research,” explains Dr. Cullen.
Preliminary assessment of the success of this initiative, conducted by Elaine Eggington, Ronnie Georghiou and Jon Burdach and published in March 2015, showed about 200 technologies made available through the scheme worldwide.
A total of 68 Easy Access IP license deals in areas of science and technology, biotechnology and medicine, computing and IT, and humanities had been signed by 18 organizations who took part in the survey.
For comparison, 677 traditional license deals had been signed by 14 organizations who took part in the same survey.
“Most participants are using Easy Access IP licences only very occasionally, and for only a small proportion of the licences that they sign,” conclude Eggington and co-authors in their report.
As of 2015, only the University of New South Wales was using the Easy Access IP scheme as their core knowledge exchange approach.
“Easy Access IP is only part of the overall strategy for building relationships between universities and companies,” notes Dr. Cullen. “On its own, this new licensing scheme wouldn’t have achieved much.”
The knowledge transfer strategy at the UNSW also includes an Easy Access Research scheme, soft-launched in 2015 and designed to establish closer relationships between researchers and industry partners in cases where no intellectual property exists yet.
Businesses are invited to set up and sponsor research projects focussed on their particular R&D problem. In return, by the end of the project the company is guaranteed an Easy Access IP license on the intellectual property created in collaboration with the scientists.
“The probability of a piece of academic IP solving a business problem of a company that a researcher didn’t even know about is vanishingly small,” says Dr. Cullen. “However, the probability that a researcher will know something or someone that will be useful to the company is really high.”
Easy Access IP, he says, is merely a reason for companies to come and speak to the researchers.
“The number of Easy Access IP licenses should not be an absolute measure. The real measure is the number of sustainable relationships between researchers and companies, originating from the Easy Access IP negotiations.”