How will my project develop?

Your project is likely to move through most of the stages of the technology transfer process:

Beginning

Start by getting in touch with us, if you haven’t already! We will ask you lots of questions in order to understand what you have done and explore with you the commercial potential of your work.

·         We encourage you to consider the commercial applications of your research at an early stage. What have you got? What is valuable, why, and to whom?

·         We will help you to think about the best way to protect the research output. Do you have data, materials, software, copyright, questionnaires, an inventive technology? We use the Invention Record form (see below) to capture your initial thoughts on this, which is available on our website:  http://innovation.ox.ac.uk/university-members/

·         We evaluate the commercial potential of your work to achieve a financial return and will discuss this with you. Research commercialisation is a commercial activity and the money spent on patents, and the time of OUI staff, is an investment by the University from which a financial return is expected.  Due to the early and complex nature of university research, the return is likely to be long term and difficult to define.  Nevertheless, we need to establish clearly that a market (current or potential) exists before we invest.

Ownership

It is essential always to have a clear understanding of who owns IP arising from research activities.  Establishing ownership of IP arising within Oxford University is the responsibility of Research Services (the IP Rights Management team).

·         To assess ownership, we will need some information from you and we use forms to collect this information. Although this may seem bureaucratic, it is tremendously helpful in ensuring that we have all the information needed to get the project off to a great start. We are happy to answer any questions you might have about this

·         The researchers provide all the necessary facts through the IP forms and invention record

·         Oxford University Innovation checks that the forms are complete, registers the project and sends all the information to Research Services

·         Research Services then follow the ‘trail’, from the research output, to the people involved, their relationship with the University, to relevant funding body terms and conditions and research contract terms. They will negotiate and make the necessary arrangements with any third parties that were involved

·         Once this process of ‘due diligence’ is complete, the University will assign (or license) to OUI IP which it owns, so that OUI can exploit the IP

You can find the forms by scrolling to the bottom of this page.

You will need to fill in:

·         Invention record, if you haven’t done this already

·         IP forms – IP/1 and IP/2

Invention record

The Invention Record is an important first step in creating a written description of your intellectual property. It fulfils several important purposes:

It helps OUI to assess whether the work is patentable or protectable through other forms of intellectual property right, and assess the commercial potential

It helps the patent attorney to prepare the draft patent, if we decide to proceed with patenting

It helps give OUI and the University’s Intellectual Property Due Diligence team an early indication as to the University’s ownership of your invention, and identify issues which will need to be addressed downstream and
It provides an important record of the work, providing a good description at a key point in the development of the intellectual property. This can become important in future if the work is commercially valuable

IMPORTANT: Discussions between you and OUI about your invention are confidential.  To avoid any inadvertent public disclosure of your invention please consider all discussions about the invention confidential.  Confidential Disclosure Agreements can be used to protect discussions with anyone outside the University and we are happy to help with this.

IP Forms

The IP/1 and IP/2 forms (available from http://innovation.ox.ac.uk/university-members/) sit alongside the invention record to give a full picture of how the work came about.  They must be completed, signed by all researchers and returned to OUI before passing it to the University’s Research Services to audit University ownership.

There are two forms:

1)      IP/1 Intellectual Property Due Diligence Form, which asks about who did the work, when it happened and where all the funding came from. It is used in order to establish the ‘chain of title’ to the intellectual property – a clear picture of the ownership and any conditions on the intellectual property.

2)      IP/2 Intellectual Property Income Distribution Form, which is used to understand the revenue distribution.

What we do with your data

We will hold the information that you provide for the purposes of registering your project with OUI and in connection with any of the work and the support that OUI provides. We will hold some of the information on a database which may be accessed outside the European Economic Area (e.g. by a member of staff travelling for work, and because the technical support for our service provider is outside the EEA, although the server storing the data is in the UK). We shall not disclose the data 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, OSE, Technikos, BBSRC). The personal data requested in the IP2 will be used by the University for revenue sharing purposes.

Protect

Building defensible walls around inventions and other research outputs is essential. It is a complex and therefore expensive activity.  We manage a large portfolio of patent families and have pursued initial applications through to granted patents on a global basis.  There is no cost to you up front: OUI pays for filing and prosecuting patent applications, design rights and trademarks, using a range of patent attorneys and lawyers who are expert in high technology fields.

·         We start by discussing IP rights strategies with you

·         We protect the research output appropriately, using patents or copyright or other methods

·         THINK PATENT BEFORE YOU PUBLISH. Any public disclosure before filing a patent can prevent you from obtaining a patent. It is not OUI policy to suggest delays to academic publications; so patent applications need to be prepared and filed in good time

·         There is more information about patenting and other forms of intellectual property rights in the reference section at the end of this booklet

Develop

We help you to identify and plan the key development work needed to ‘de-risk’ the project to make it attractive for a potential licensee, for example:

Software
e.g. translate from an academic coding language into a more commonly used commercial language, build a user-friendly interface, or gather evidence of user experience
Physical sciences
e.g. a prototype to be designed, built and tested, lifetime studies, or demonstrating a wider range of applications
Life and medical sciences
e.g. demonstration in a broader range of examples, screening of drug candidates, animal models or clinical trials. You might need input from regulatory experts, or to build a health economics case.
Questionnaires
e.g. validation of how the questionnaire outputs can be used and interpreted, translations, or user manuals
Idea for an app
e.g. build a database or generalise a database structure for broader applicability; provide a user-friendly interface; build the website
Any other not listed here
It all depends on the project and the market for it! The question is, what will a potential partner need to see in order to become seriously interested in using your project?

We support you in applications for translational funding and can advise on which source of funding is most appropriate, from the seed funds managed by OUI or the University, or from external funding bodies. The research councils and many of the charitable funders offer dedicated routes for translational funding. There is information about this on our website, see http://innovation.ox.ac.uk/university-members/translational-funding/

Market

This is when we spread the word about the project:

·         We market first to the Oxford Innovation Society, and then (after 30 days) through our wider networks

·         We prepare and distribute non-confidential marketing information

·         We use specialist searching skills to understand the market and identify potential commercial partners, proactively marketing to new contacts

·         We publicise the project through our website and social media, using the press where appropriate

·         We put appropriate confidentiality agreements in place to enable more detailed discussions

·         Suggestions from the researchers about potentially interested parties, or appropriate contacts, are always useful

·         We follow up potential leads and enter discussions with interested parties

·         Marketing, Commercial Development and Confidentiality is described in more detail below

Review

We will review the project at regular intervals to ensure that, as the investment of time and money deepens, the likelihood of financial return also increases. Many factors are likely to evolve over the life of a project, including:

·         The level of technology readiness (the facts of what you have done won’t change of course, but your understanding of how this relates to market readiness and market need might change, and you might continue to work on the project)

·         The route for the project to reach the market

·         The size of the opportunity and its appeal to the market place

·         The likelihood of achieving a return

·         The strength and progress of any patent

·         Your own willingness to continue to support the project

Patents get progressively more and more expensive as time passes. If we decide that we cannot continue to support a patent, it will be offered to you to continue with at your own cost under the University’s Regulations. See below section ‘Offer to Researchers’.

Deal-making

·         Discussions and negotiations with interested parties

·         Pricing, negotiating and concluding licence or other agreements associated with licensing and spinout activity. There is more detail about licensing below

·         The legal arrangements describe the development and exploitation of IP to optimise the overall benefit to the researchers, host Departments, the University and OUI. They also protect the continued use of the IP by the researchers and University for academic purposes, and protect individuals and the University from risk

·         After the deal we manage the licensee’s obligations to ensure they report progress and pay what is owed

·         The resulting revenue is distributed according to University Regulations (see Revenue Sharing from licensing on page 14).

Offer to Researchers

·         You and your fellow researchers bring many interesting projects to OUI for commercialisation. Unfortunately, like other parts of the University, we have finite resources and so it is not possible for us to commit to invest in all projects indefinitely. Sometimes therefore, we unfortunately have to decide to stop a project.

·         If in our view the potential commercial benefits no longer justify the continued investment of University resources in your project, we will offer the intellectual property to all the researchers involved in the project, in accordance with the University’s Regulations. This gives the researchers the opportunity to take the intellectual property on at their own cost.

·         If you wish to take up the offer, the IP will be assigned to you and you would then be responsible for all decisions, expenditure and commercial progress.