Working with University & IP. Sue Ratcliffe, Swansea University

1. Sue Ratcliffe
Patent Attorney

2. • IP in a University Context

3. • Universities are a Unique Situation
• A university is like a company with several
divisions and a great deal of expertise and they
are:
• a great untapped resource!

4. • Collaborative Schemes
• University Consultancy
• KESS Studentships (Knowledge Exchange Studentships)
• ATM Studentships (Access to Masters)
• TSB – Technology Strategy Board
• KTP - Knowledge Transfer Partnerships
• Research Councils
• (In future there may be schemes reinstated such as A4B/CIRP
subject to funding)
• LEAD – Management Training

5. • Main areas where issues arise for a collaboration
• Contractual issues
• IP
• Confidentiality
• Project management and delivery
• Compliance with University Policies

6. • Contractual Issues
• Correct Parties Included - parent company/subsidiaries?
• Are the aims of the contract clearly defined?
• Are the obligations in the contract reasonable – can they be
delivered on time?
• Parameters that a university has to work within – e.g.
warranties, liabilities, freedom of information requests
• Has the University managed a third party’s expectations and are
work plans in place to deliver the project?

7. IP
• What IP are we talking about – patents, know how, copyright?
• How is the background and foreground IP delineated?
• Who are the inventors – staff, students, third party?
• Is IP to be assigned?
• Licenses?
• When can academics publish?
• Freedom to use for academic research
• What do the parties receive in income if the IP is exploited?
• Who is going to manage the IP connected with a project?
• Ongoing consultancy work and collaborations?

8. Confidentiality
• Academics want to publish a commercial partner may not if a
patent application is to be filed – need to discuss
• Once a patent application is filed, how are future publications
by academics handled?
• NDAs
• Management of confidential information?
• Are research groups working for competing industrial partners –
how are conflicts handled?
• What if research staff move institutions?
• Freedom of Information requests

9. Project Management and Delivery
• Aims of the project and milestones
• Is the business manager also aware of what the deliverables are
and have they a plan in place to keep the project on track
• Are the deliverables realistic?
• Outputs – is everyone clear on what these are?
• Relationship management – contacts?
• Reporting?
• Can future projects arise from a current project – how are these
propositions put forward to collaborators/funders?

10. • Liability
• For a University this is limited – will not accept indirect and
consequential liabilities
• If you are dealing with overseas companies, will there be
different types of liabilities particular to that country?
• Money laundering, good governance
• Ethics e.g. working with human tissue
• Implied terms e.g. Sale of Goods Act

11. Compliance with University IP Policies
• Student IP Policy
• IP Policy for Staff
• Conflicts Policy
All have been set up to provide a framework for all those studying at
or who are employed by the university to help them minimise
risk for the university and themselves
They also put in place a framework that helps the university work
with third parties more effectively

12. • Main issues that need to be considered when working with a University …..
• NDAs should be signed by authorised signatories of the University
• Be aware of IP policies at the university, they are there to help all parties
• Know what the objectives are of research contracts and make a project plan
• Be aware of IP requirements that funders may have put in place
• Keep project managers informed of the progress of the project
• Keep in mind possible conflicts between various projects so conflicts can be managed
• Record data on a regular basis and keep good lab books, it will provide useful
evidence of what was done when if there is ever litigation
• Keep in regular touch with university TTOs (Technology Transfer Offices) in case there
are issues that could affect commercialization
• Be aware of the risks associated with IP e.g. infringement of third party rights

13. • Final Points
• Third mission activities include helping companies, especially in Wales and the
convergence area
• There is world class expertise in Wales for research collaborations or consultancy
work
• The legal teams and Tech Transfer Offices of the universities have a lot of expertise
and can assist greatly in project management and commercialization
• There are grant applications that universities can access if collaborations are going on
with third parties e.g. FP7 and Horizon 2020
• Research is a collaboration so there needs to be input and dialogue between both
sides to have a successful outcome
• By working together we can make Wales a more vibrant economy which attracts
inward investment and jobs and raises the profile of Wales in the world

14. Any questions?
Contact:
E: sue.ratcliffe@swansea.ac.uk
T: 01792 602085
E: d.r.guite@swansea.ac.uk – for details of collaborative schemes
T: 01792 295291