FAQs


Academic life and publication

I’m very busy – will undertaking technology transfer activities take up a great deal of my time?

Technology transfer is rewarding in many ways but does require some time commitment.

You will need to spend time helping with activities such as:

  • drafting and prosecution of patents

  • identifying potential markets

  • communicating with potential licensees or users of the technology

  • applying for and using translational funding

These activities are not usually all required at once. Rather, you should expect to invest bits of time in a variety of ways over a long period to make your project a success.

Oxford University Innovation staff appreciate academic workloads and research priorities, and will accommodate these and assist in any way they can.

I have an idea that I believe has commercial application, when is the right time to contact Oxford University Innovation?

Straight away. The Oxford University Innovation manager will help you assess the timing, but it is better to contact us too early than too late, when patentability may be irretrievably lost.

I work in a fast moving field and am keen to publish quickly. Won’t the process of filing a patent slow this down?

Oxford University Innovation will not prevent you from publishing your work. A patent application can be prepared and filed quite quickly (days, more normally weeks) once a patent attorney has been instructed.

Although it is very important to take due care and consideration in the preparation of a patent, this process can be complimentary to scientific manuscript drafting. So, if timed right, constructing a patent application should not cause any delay in publishing.

As soon as the patent application has been filed there is no restriction on subsequent publication of the invention, although further new information relating to the invention should not be published without checking with Oxford University Innovation innovation first as this could be valuable.

Is it OK to present my work at an internal meeting such as our departmental away-day?

Possibly. We would always recommend discussing it first with Oxford University Innovation to determine whether there is a risk of non-confidential disclosure which could undermine a patent filing on the work in question.

If you are discussing non-patented results internally, make it clear that they need to be treated in confidence. Watch out for any external visitors (eg research sponsors or collaborators) attending departmental meetings, as this would turn a discussion at an internal meeting into a public disclosure.

Is presenting a poster a public disclosure?

Yes.

  • Any written or oral disclosure, even to a single person, counts as a ‘public disclosure’ in most countries.

  • Internal discussions within your group and department are generally considered to not constitute a disclosure. However, departmental poster sessions can include external visitors (eg research sponsors or collaborators) and their presence is enough to count your poster as a public disclosure. Even if no one outside the department turns up, if a meeting is open to the public, it is a public disclosure.

My thesis will shortly be made available through the Bodleian Library and Oxford University Research Archive – how will this affect the patentability of my invention?

Making a thesis available, through either the Bodleian or the Oxford research archive, counts as a publication. Any publication or public disclosure prior to patent filing destroys patentability.

Oxford University Innovation will not ask you to delay completing your degree, but it is possible to submit the work to the Bodleian under embargo for a limited period of time in order to protect commercial interests or allow time for patenting.

Will I still be able to work on an invention if Oxford University Innovation licenses the associated patent rights to a company?

Yes, Oxford University Innovation includes in its licences a ‘licence back’ to the University and its researchers so that licensed IP can continue to be used for the University’s non-commercial academic research purposes.

Will my ability to publish my research be affected by licensing of associated patent rights to a company?

Whenever Oxford University Innovation negotiates a licence, it is one of our highest priorities to ensure that the Oxford academics who generated the IP in question remain able to use such IP for the purposes of non-commercial academic research and to publish the arising results.

In certain circumstances a licensee company may request that publications related to the licensed IP are reviewed by the licensee prior to publication in order to protect its confidential information and any new IP, but Oxford University Innovation aims to avoid any undue restrictions.

I have recently joined Oxford – can Oxford University Innovation help commercialise IP I generated with my previous university employer?

Yes.

Oxford University Innovation and Research Services can work with you to assess whether it would be useful to transfer to Oxford any IP generated before your move.

If all parties agree, Oxford University Innovation and Research Services can make the arrangements with your previous employers to assign the IP.

What will happen to my patent if I move to a different university?

This will need to be discussed with the appointed manager who handles your project. In some cases Oxford University Innovation will continue to exploit the patent, and if successful you will still receive a share of the proceeds (remember to tell University Finance your new address – email royalties@admin.ox.ac.uk quoting the Oxford University Innovation project number).

Alternatively it may make sense for your new university to take the patent on, in which case your manager will need to start discussions with that university.

Benefits of commercialisation

What are the benefits to me, my group and the university of becoming engaged in technology transfer? Who gets the money if we are successful?

Researchers, departments and university benefit when successful technology transfer leads to impact in society. Evidence of impact has benefits for reputation, attracts students and researchers and enables further research funding. The process of working to commercialise your technology can stimulate your thinking about your work and bring you new contacts.

Financial returns from success are distributed to researchers, departments and the University according to the University’s Regulations. Oxford University Innovation takes a 30% fee. The third parties that provided the funding for the original research may also require a revenue share, depending on the terms of their funding awards. It is possible for academics to waive their entitlement to royalties in favour of their department. Please let us know if you are interested in this.

Do Oxford University Innovation project managers get a financial cut of proceeds from commercialisation?

No, Oxford University Innovation staff do not benefit personally from the proceeds of commercialisation.

Funding and costs

I’d like to apply for some translational funding – can Oxford University Innovation help? What do I need to do?

Translational funding is used to develop a technology towards commercial application, for instance carrying out proof of concept experiments or prototype work.

Yes, we can help, and translational funding bodies often require applications to be supported by your technology transfer office – Oxford University Innovation.

We will do a better job for you if you contact us early in the process of preparing your applications so that we have time to work together on building the case for support.

Can Oxford University Innovation provide funding to help me develop my invention?

Oxford University Innovation manages seed funds to which academics may apply in order to develop inventions arising from University of Oxford research.

Oxford University Innovation can also help you apply for translational funding from other sources, as many funders such as research councils and charitable funding bodies run translational award schemes. Contact us for more information.

Can you give me more information on the seed fund, its conditions, how much money is available and what it can be used for?

More funding information is available. Contact us if you have more queries.

Does Oxford University Innovation pay for the costs of protecting my invention?

Yes.

Oxford University Innovation pays all fees and costs associated with protecting and commercialising your invention (eg patent costs, which run to £many thousands). These costs are eventually recovered from successful commercialisation.

IP ownership, forms and process

Do I have to work with Oxford University Innovation if I want to commercialise some IP I have created?

Yes.

Refer to the Regulations for the Administration of the University’s Intellectual Property Policy.

There are many advantages to using Oxford University Innovation, including:

  • financial (Oxford University Innovation pays all patenting costs, and you share the benefits under the Regulations)

  • experience (collective and individual)

  • track record securing deals

  • skilled negotiators

  • extensive networks and contacts which lead to deals, and in some cases research funding too

  • reduction of risk (Oxford University Innovation enters into commercial deals, not you personally – you are protected from product liability and other risks)

The IP forms you sent me seem very lengthy, do I need to fill them in and why do you need all that information?

The intellectual property (IP) forms provide essential information allowing Oxford University Innovation and the University to understand the full background to the invention including ownership. Please answer all the questions.

There are 3 forms:

  • Invention record – provides details of your invention

  • IP1 – asks for details of who was involved, when the work was done and how it was funded

  • IP2 – sets out how the revenues will be shared if the project is successful

Find more information about IP, patents and licences.

Data protection notice
We will hold the information that you provide for the purposes of registering your project with Oxford University Innovation and in connection with any of the work and the support that Oxford University Innovation provides. We shall not disclose it to any third parties except in connection with the support we provide to you and only to the extent necessary. For example, if a patent is filed on your technology and you are an inventor on that patent, we will be required by the patent office to disclose your name and departmental address. We may also be required to provide information about projects to the University’s research funding and commercialisation partners (e.g. BRC, OSI, Technikos, BBSRC). The personal data requested in the IP2 will be used by the University for revenue sharing purposes.

I don’t know how to agree sensible percentages for revenue sharing on the IP2 with my colleagues, can you suggest how we should approach it?

The only rules are that:

  • it is a legal requirement to identify correctly the inventors of a patented technology, or the authors of any copyright

  • you must all agree

  • the percentages must add up to 100%

If you are stuck, it may help to think about the following points. Does it feel right to suggest an equal split between you all? If not, why not?

Agreement on sharing of any money does not have to reflect academic merit (though the University will follow your lead in negotiating a share with collaborating institutions).

It may help to keep money and academic kudos completely separate in your conversation. Bear in mind that most technologies will break even at best, and the ones that make a lot of money are pretty rare. We ask you to come to agreement now, while it is still fresh in all your minds, but it is not worth falling out over.

Patenting and timescales

When will a patent be granted?

Attaining a granted patent can take around 5-7 years, but it can also be quicker or slower than this, and some applications never reach grant.

There are many factors including:

  • which territories you apply in and the route you take for the application

  • what type of technology it is

  • whether you get a grumpy patent examiner or one who is rushing to meet his examination targets for the month

  • how broad your claims and examples are

I am collaborating with an academic from another university, which TTO files the patent?

Please ask your academic colleague to put Oxford University Innovation in touch with the technology transfer office (TTO) at the other institution so we can start to discuss it.

Which office leads will depend on how this piece of technology fits with other IP you or the other academic may already have, and on the research funding.

We will take your views and those of the other academic into consideration.

A company is funding my research and wants to file a patent, do I still need to involve Oxford University Innovation?

Please contact Oxford University Innovation or Research Services. It will depend on the research funding agreement (please let us have a copy if you have one).

We need to check what the funding agreement says about important questions such as:

  • does the university or the company own the IP?

  • who has the rights to file the patent?

  • who will pay for it?

  • will there be any financial benefit to researchers or university from successful commercialisation?

When is the best time to file a patent?

Before you publish – any patent must be filed before the first public disclosure of the invention. A good time to contact Oxford University Innovation is when you are starting to prepare a draft paper on the work.

We will always try to work within your timescales for publication. If you come and talk to us at an early stage, it makes this much easier and the patent will be of better quality.

A patent also needs to include as full a description as possible of the technology, and at least some working examples.

How long will it take to commercialise my technology?

Depending on the technology, it can take anything from a few months to a number of years to reach the point of being able to sign a licensing deal on a technology.

Some technologies are relatively near market but others require sometimes extensive work through translational funding to reduce the risk and increase the commercial attractiveness for commercial entities who may be considering working with the technology.

Often Oxford University Innovation will work with the researchers through an iterative process of seeking feedback from licensees, doing some more work, and trying again before it is possible to reach a deal.

Once a licence deal is signed, the licensee starts work to bring a product to market based on the technology, and this can also be a lengthy and difficult process.

How long will Oxford University Innovation support my patent for?

Each case will be evaluated on its merits (commercial prospects, strength of innovation) and Oxford University Innovation will continue to support the patent while viable prospects for commercialisation can be balanced with the costs.All Oxford University Innovation projects are subject to regular reviews and we consult with the researchers on plans.

Certain points in the patenting process are particularly expensive and these are key decision points for Oxford University Innovation, eg entry to PCT (12 months from first filing), national phase entry (30 months from first filing), post-national phase review. One important factor in the evaluation is the ability and willingness of the researchers to support the manager in the project which may include continued work on the technology.

If Oxford University Innovation decides not to continue with the patent, it will be offered to you and your co-researchers for you to take up at your own cost in accordance with University Statutes.

Questions about OUI

What background do Oxford University Innovation technology transfer managers have, can I speak to someone who understands my subject?

Oxford University Innovation technology transfer managers are well qualified and come from a diverse range of backgrounds.

Many have scientific postgraduate degrees (40 PhDs) and commercial qualifications (18 MBAs).

Industry experience ranges from running small start-ups to senior positions in major multinational corporations.

We have found that this combination of scientific training alongside industry experience provides optimum technology transfer. Find more information on individual Oxford University Innovation staff.

What role do Oxford University Innovation technology transfer managers play?

Oxford University Innovation technology transfer managers work alongside Oxford academics to identify, protect, and commercialise intellectual property where appropriate. Find information about commercialising your technology.

Your technology transfer manager will work with you each step of the way from invention disclosure to the execution of a commercial deal.

Does Oxford University Innovation use a different ‘model’ to other university technology transfer offices (eg US universities)?

Technology transfer is a relatively young industry and around the world there are some different approaches depending on circumstances, but overall there are more similarities than differences.

Oxford University Innovation has and continues to be an active leader in the field of technology transfer and although each project is unique, our general approach is similar to that of many large US universities.

Is Oxford University Innovation successful at commercialising technologies?

Success comes in many forms. The latest figures are available in the Annual report.

What are the benefits and costs of using Oxford University Innovation?

Oxford University Innovation:

  • provides researchers with commercial advice

  • funds patent applications and legal costs

  • negotiates licence, consultancy and spin-out company agreements

  • protects you from legal and financial risk

  • identifies and manages consultancy opportunities

Oxford University Innovation pays for all the costs, provides all the support, and you get a share of the money on the successful projects. You pay none of the costs of the unsuccessful ones.

Any income received is treated according to the University’s Regulations .

Oxford University Innovation, research services, business development, people in departments…I’m confused about who I need to talk to for what, please help!

We all try to work closely together and Oxford University Innovation staff are well connected to the University’s Research Services and the Business Development and Knowledge Exchange teams. Please contact us and we will try to put you in touch with the right person, if we cannot help.

Spinouts

Who gets equity in a spinout?

The founding academics, University, and investors.

For IP-based spinouts from the University’s MPLS and Medical Sciences Divisions, the University’s founding equity will be shared with Oxford Sciences Innovation through their partnership with the University.

Some research funders also expect to share some equity if they funded the research underpinning the technology that will be exploited in the spinout.

Any investment will dilute the founder shareholding and there is always a negotiation with investors.

The University expects to be a significant partner in the spinout because of its role in:

  • providing the setting for the development of the technology and the spinout opportunity

  • providing permissions for academics to become and stay involved alongside their academic work

  • providing substantial protection to the founders compared with a non-University entrepreneur

  • providing Oxford University Innovation to help with the whole process

  • allowing the spinout to benefit from association with the University’s name and reputation

Find more information about starting a company.

Oxford University Innovation does not take an equity stake in the spinout company but acts to bring the spinout together and to license the technology.

The Startup Incubator startups are a little different – Oxford University Innovation takes equity but the University does not.

Incoming managers of the new business may also need a stake, either at spinout formation or through a share option scheme.

What is Oxford Sciences Innovation (OSI)?

The University has appointed Oxford Sciences Innovation (OSI) as its preferred partner for provision of capital to spin-out companies.

OSI has raised a fund of £320m to invest in, develop and advise companies spinning out of the MPLS and Medical Sciences divisions of the University. You can read more about it here.

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