LSPN Connect: commercialising university tech
Successful commercialisation of academic innovation relies upon a close relationship between technology transfer offices (TTOs) and the institution’s outside counsel, LSPN Connect heard yesterday, August 27.
Paul Chapman, partner at Marks & Clerk, focuses his practice in part on helping universities commercialise their inventions. He stresses that every university does it differently.
“Some want you involved at a very early stage and are asking questions way before you’re in a position to file a patent—I see that as a very good thing,” Chapman says.
The earlier the patent attorney gets involved, he adds, the better position they’re in to educate the rest of the team on IP and become integrated into the project.
“Other times, universities will do all their due diligence first and call me in when they’re ready to go ahead. Either way, I like to have a very strong relationship with the university. When it really works well, I’m almost embedded in the tech transfer office,” he says.
Neringa Bermute serves as industry partnerships and commercialisation executive at Imperial College in London. She agrees on the importance of ensuring her team can benefit from patent attorneys’ knowledge.
“We’ve had some very successful training sessions. TTO people don’t always have IP experience,” she says.
But how do universities build these relationships in the first place? Natasha Jones commercialisation manager at the University of Kentucky, says her TTO has decades-long relationships with some patent attorneys.
“We select the attorneys based on subject matter and expertise. If something comes in from this lab, we know it will go to this particular attorney,” Jones says.
That’s not to say that the relationship can’t be tested at times. There are certain key things that every TTO expects from their attorney.
“Be responsive to emails,” Jones says, adding: “I know one who’s not that great, and we’ll leave it at that. It shouldn’t take four months to get a patentability opinion.”
She continues: “We also really like when law firms send spreadsheets showing all the upcoming deadlines.”
And of course, invoicing. As Chapman points out, this issue comes up regularly with almost all clients.
In the case of TTOs, Jones says attorneys should “tell us which patent the bill goes with”, or staff in the TTO will be left trying to piece it together.
Bermute, meanwhile, implores attorneys not to “try contact the inventor without copying in the TTO. The university is the client and makes the decisions”.
Chapman says that when he takes on new trainees, “it’s on pain of death that they correspond directly with the inventor without copying in the TTO”.
“That’s where things go wrong. The client can say they’re not going to pay you as they didn’t instruct it,” he explains.
In terms of what patent attorneys expect from their clients, the key thing for Chapman is that they are “realistic” about workload and deadlines.
This is particularly true at the moment. With researchers rushing to develop COVID-19-related technology, Chapman says he’s being asked to turn around some patentability opinions in 12 hours.
The key thing to making the relationship work, all agree, is communication, simple language, and exchanging clear information throughout.
The panel also discussed COVID-19 patent applications, licensing practices, and the challenges of working with industry. Join LSPN Connect for live and on-demand content here.
