Managing Intellectual Property

How do you make sure that a project you’re funding delivers what you expect?
This is a question that research funders frequently ask themselves. Isis Enterprise, the technology transfer arm of the University of Oxford, has also grappled with many aspects of funding agreements, their practical outcomes, and how they work when the results are to be commercialised. Isis has developed a framework which is aimed at assisting research funders in securing the appropriate benefits and value from their funding.

“Our members fund a diverse range of basic, clinical and psycho-social research projects, and thus the detailed arrangements will vary” says Liz Philpots, Head of Research Practice from AMRC. “But it is clear that there are certain common key points that need to be addressed to ensure a successful outcome”.

Paul Whyte from Isis Enterprise – an arm of Isis which provides consulting expertise to external organisations from the research, government and private sectors – has distilled the key points and pitfalls to consider in managing the intellectual property aspects of funding awards.

Part I covers how to structure successful relationships and intellectual property arrangements with the funded researcher.  Part II continues by examining the commercial side of research and development, this time focusing in on some of the steps involved in moving research from bench to boardroom.

 

Part I

How should I structure my grant funding to get what I am paying for?

 

How should I manage relationships to ensure that I am kept informed of progress and that I receive what I am entitled to?

How do I incentivise and reward researchers?

What is a patent used for and what are the implications of filing?

What about other intellectual property rights?

Dos and Don’ts

Part II

What is the difference between ownership of IP and rights to a share of revenue?

Who should lead commercial exploitation?

What are reach-through rights and how do they impact commercialisation?

What is the best way of ensuring funded research is commercialised and how do I value the output?

What are the different outputs from funded research and which should concern me?

When is a licence or a spin-out appropriate?

Dos and Don'ts


About Isis Enterprise

Isis Enterprise, offers consulting expertise and advice to clients in the public, government and private sectors on a global basis.  IE activities range from advising on policy and best practice through to working with private sector companies to help them grow their businesses.  IE offers interim management expertise and advice on funding agreements, patents, knowledge transfer, business planning, market assessment, business development, partnering, licensing, spin-outs, technology search and acquisition, technology transfer, best practice, translational & seed funding, training and commercial strategy.

This article was written by Paul Whyte, Senior Consultant and Renate Krelle, Business Relationship Manager, Isis Enterprise.

Contact Dr Liz Philpots, head of research, 0207 685 2625, for advice and support on this issue.

Updated 11 November 2008

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