22 May 2013   |   News

New IP initiatives needed to accelerate translation of university research

Negotiations over IP are acknowledged as one of the biggest bottlenecks in university/industry collaborations. A number of piecemeal schemes aim to overcome this, but a systematic approach is required to create more liquid markets for research outputs

In common with its peers across the pharmaceutical industry, GlaxoSmithKline (GSK) is turning to university collaboration as a source of innovation. Since 2010 it has offered academic partners the chance to become core members of drug discovery teams – sharing the risks and rewards – through its Discovery Partnerships with Academia (DPAc) scheme.

To date nine such collaborations have been established, but there’s a problem, in that the contracts are complicated and take a long time to put into place. Earlier this week, Pearl Huang, Global Head of DPAc, announced Discovery Fast Track, a competition designed to overcome this. To avoid initial contract negotiations, university researchers entering the competition are invited to submit a one-page non-confidential summary setting out a novel drug development concept, including details of the biological target.

GSK hopes running the competition (which is open to researchers in North America only) will allow it to rapidly identify the most promising drug targets. It intends to select ten winners from among the one-page submissions and will screen these proposed targets against the 1.8 million compounds in its chemistry library. If successful, this could then lead the way DPAc partnership.

Huang told Science|Business that running a screen is usually the first step in any collaboration. By doing this in advance of full negotiations on a formal DPAc contract, the process of establishing a partnership can be speeded up. At the same time the risks are reduced because only targets that generate robust hits are taken on.

Perceptions of value

Of course, if there is a good response to the competition, GSK will also gain the advantage of getting an early look at a wide range of research, and having the chance to assess its likely utility and value.

This will help overcome one of the big stumbling blocks in commercialising publicly-funded research, which is that university technology transfer offices tend to have different opinions from industry on the value of IP. As a report on commercialising research published in March by the UK House of Commons Science and Technology Select Committee noted, “There is a common perception among industry and investors that universities can be unrealistic in negotiating terms on the transfer of IP.”

UK Science Minister David Willetts characterised this as a “dialogue of the deaf” in which universities exaggerate the starting value of a discovery and fail to acknowledge the value added by the commercial development of a discovery.

One of the recommendations of the report was that the UK government should assess the benefits of Easy Access IP, a scheme originally set up by Glasgow University, whereby companies can access IP free. This movement has grown to embrace 17 universities in the UK and elsewhere in Europe, Canada and Australia, since its inception in 2010.

Building partnerships around IP

Detractors say IP is only made available free when universities have failed to license it on a commercial basis. However, a failure to find a licensee does not mean a piece of IP is worthless. Much of the IP advertised through Easy Access IP is early stage, meaning it will take significant investment to translate through to a marketable product. Rather than languishing with the tech transfer office, such IP could underpin a collaboration with industry.

It’s also the case that IP can be of value to a company (but not to a university) even if it does not exploit it directly, since having a particular piece of IP in the portfolio can ring fence a company’s intellectual property as a whole, making a start-up more attractive to investors.

Making IP free at the point of delivery is also a good way of opening the doors of universities to industry. This is the motivation behind the University of Manitoba’s fresh stance on the ownership of IP created in collaborative research programmes. Under the scheme, companies will own and manage IP arising from partnerships, with the University of Manitoba receiving royalties on sales of any products or services that make it to market.

Getting a fair return

This approach – cutting out long-winded negotiations at the start of a partnership and waiting until a company starts to make money from a piece of IP – should ensure universities and university researchers get a fair return. It also circumvents another significant bottleneck, which is that university tech transfer offices simply do not have enough capacity. In the University of Manitoba scheme, IP management falls to corporate partners, which means the tech transfer office does not put effort and resources into IP that ultimately will have no commercial value.

The issue of nudging university research to the marketplace is exercising the European Patent Office (EPO), which earlier this month hosted a conference on the subject in its Munich headquarters. The 300 delegates focussed on how companies, universities and governments can improve the management of IP in universities both to foster collaborations and to deliver financial returns.

Effective IP management needs to be a cornerstone for every university, Raimund Lutz, vice president of EPO told the conference. “This will enhance their relevance to society and at the same time support economic development,” Lutz said.

Yves Leterme, deputy secretary-general of the OECD (a co-sponsor of the conference) agreed saying university IP represents “an underutilised reservoir of growth.”

Surrogates of IP success   

There’s a common theme emerging from across all the various university, corporate and government initiatdeaives that are being established to speed up movement of IP. They all point to the need to shift technology transfer offices from the current focus on surrogate measures of success - number of patents filed, number or licenses granted and number of companies formed - and put attention on the commercial bottom line - of revenues generated, profit (or loss) on these activities, and jobs created.

Never miss an update from Science|Business:   Newsletter sign-up