Universities and IP

The global patent system was not conceived with modern universities in mind. This need not however stop the academic sector working successfully with patents as long as some ground rules are understood.

In an increasingly competitive academic environment, grant funding, research assessments and careers can all hinge on publications. But publication in a traditional journal or online, conference presentations, poster display, and other forms of public dissemination are damned by the patent system as disclosures that give rise to prior art, after which an invention can no longer be patented in most countries even though the disclosure is the inventor’s own. There are unfortunately no UK or European plans to introduce the sort of grace period provided by US law, whereby it is possible to file a year after a disclosure by the inventors and discount that disclosure as prior art. It is however usually possible to work with this constraint.

Many academics have either learned the hard way not to disclose too soon or been educated by outreach from technology transfer offices (TTOs) or the patent profession. More are therefore now aware of the issues and consult TTOs or patent attorneys ahead of time. Sometimes researchers are also incentivised to patent by the same funding frameworks that promote publication so the university’s academic and commercial goals are more aligned. Most university patenting is still reactive rather than strategic, in that patent filing tends to be considered only when a disclosure is near and universities are often forced to file before optimal experimental support is available, but this is what it is. Businesses collaborating with universities have come to terms with these constraints.

Another worry is that, once the initial flush of enthusiasm leading to a filing has passed, it is harder for universities to develop inventions beyond proof of concept. Academic labs have other priorities and may lack resource or receive little academic credit for experimentation that is more development than research. It can therefore be difficult to bolster university-originating inventions after patent filing to a level that convinces patent offices of enablement. This has however also unlocked somewhat because some universities can themselves now provide early-stage funding and more diverse commercialisation models are available: not just traditional licensing but spin-outs, SME collaborations, contract research, translational research funding and so forth. Universities can and do take some projects a long way now, especially via spinouts that collaborate closely with the parent institution. This is beginning to level the patent playing field.

Patent costs are a perennial issue, but TTOs can contain patent drafting costs by capturing invention disclosures and triaging the projects taken on. Considerable flexibility on costs is also available from the patent profession at this stage. Longer-term expense will always be greater as filings fan out worldwide but can be managed to an extent by using the Patent Cooperation Treaty (PCT) to defer the decision on how widely to file and taking that decision pragmatically when the time comes. Even the possibility of patent protection in a handful of major markets is often worth a commercial partner buying in to.

So, although things are not perfect, in general UK universities are reasonably well served by the patent system, not because it is ideal for them but because they have evolved to cope with it.