Universities for real

Ask as tough a question as you like, then clear the rights

A sense of disappointed expectation used to hang over relations between universities and enterprises. If only you could consistently match technical know-how to dynamic execution, you had the makings of a powerful combination. But more often than not, relationships went sour.

Typically, universities struggled to take a commercial view and were distracted by following up the academic implications of their research. Or, they were naïve in believing how close their ideas were to market and putting too high a value on their intellectual property.

For enterprises, it was questionable whether it was worth resolving these differing views in a collaboration that could take months to negotiate and then be hard to enforce.

Such doubts are being dispelled. Two programmes in particular have contributed to a change in mood.

Over the last decade, the Higher Education Innovation Fund has poured millions of pounds into professionalising how universities manage their transfer of technology and knowledge. Most universities now have a professionally-run team which specialises in commercialising research through spin-outs and licences, as well as undertaking research and consultancy projects for enterprises.

The University of Southampton, for example, had never floated a company in 35 years, before two spin-outs listed on AIM in 2004. This change in approach means that when enterprises ask universities about integrating state-of-the-art technology into their products, they will be given a much more switched-on response than they might expect.

Because technology moves so fast and knowledge flows so freely, enterprises cannot afford to dawdle over the nature of any partnership. Through UK-IPO, they can now use a series of model agreements for use in their collaborations with universities. This toolkit has templates for five different commercial scenarios, from an enterprise's request for research through to taking a university's breakthrough to market.

The circumstances of each collaboration will vary, but the templates mean that any common ground can swiftly be covered, leaving time to sort out any sticking points.

As an enterprise, you will probably want to draw a clear line between IP created in the project and any that results from your ongoing activities. So, before you start, it can make sense to declare any IP that you already have.

Also, if you are asking the university to test your ideas, you might want to be sure that you retain any IP, even if there are changes to your original thinking. Otherwise there could be claims against you later.

UK-IPO's templates only cover agreements where there is one clearly designated owner of the IP. Collaborations where parties share the rights can become more complicated, because it is so hard to predict the potential outcome of any innovation.

If each of the partners has to agree to your use of the IP, then you can box yourself in commercially. It is better to be clear about when permission is required. To make life easier, you might think about splitting up the rights by territory, or by technical application. Similarly, it is worth knowing what happens when the project ends. Who owns which rights?

Unless agreed in advance, these kinds of questions about IP can undermine even the most promising lines of joint enquiry.