Patents in an Academic Environment

The word “inventor” tends to conjure a picture of an eccentric working late into the night in a garden shed to create weird and wonderful devices. Everything from novelty snowmen to squirrel-proof bird feeders has been patented over the years but most inventions, and inventors, do not in fact fit this stereotype at all. Many inventions arise during the course of in-house commercial research in major industries such as electronics, pharmaceuticals, telecoms or biotechnology and increasingly the academic sector is a major contributor as well.

The US Bayh-Dole Act of 1980, which gave US universities control of federally funded inventions that their researchers originated, is widely credited with beginning a revolution in academic patenting and commercialisation. Technology transfer in universities has since become a sector in its own right. In the UK, academic institutions have become increasingly interested in patenting as it has become more relevant to research assessment exercises, funding and of course revenue. Originally this mostly came via traditional licensing but now there are more options via spin-out companies and translational funding, corporate venture funds and so forth. The UK’s models to support this are as yet far from perfect and it remains noticeably easier both to spin out and scale up in the USA where the infrastructure is more developed, but the UK is probably better at technology transfer than any non-US country and certainly originates many good inventions. 

Academics have changed too. Sometimes it is still is a better option just to publish and be damned – or rather hopefully praised academically – than plough money and effort into an invention that may be of tenuous protectability or commercial value. But increased awareness of intellectual property (IP) combined with a generational and attitudinal shift means it is now rare to meet a scientist who knows nothing about patents or is philosophically opposed to protecting inventions. Consistent with funding frameworks intended to foster commercial partnerships and outcomes, we have also observed a greater tendency to permit commercial and IP considerations to shape the choice and conduct of research. Academic and commercial science have in effect converged a little around IP as a common denominator.

But in the end nothing changes: academic inventions still tend to be fundamentally more blue-sky and further from market, and patents on them still tend to be filed earlier and more speculatively because they have to be published rather than developed in secret. And although more countries now have US-style “grace period” provisions in their patent laws that allow patent filing after an inventor disclosure, unfortunately Europe, China and many other jurisdictions still do not (and may never) so the risk of an inadvertent release of the invention is always there. Patenting in technology transfer therefore remains an almost inherently reactive and somewhat cash-strapped process of capturing inventions before they are lost to publication. Commercial partners conducting due diligence have to accept that a spin-out company’s first and most fundamental patent application will typically be licensed from the parent institution and may have been filed in a hurry and on a budget. 

So in some ways the patent deck always feels a little stacked against academic inventions but this does not stop the biggest UK technology transfer operations fostering an increasing number of spin-outs and returning millions of pounds per year in profits to their parent institutions. The development of this sector over the last 30-40 years has been much more successful than unsuccessful.

What next, though? Few expect the UK leaving the EU to be good for UK science, funding may be an issue and tech transfer budgets are affected by this climate too, but on the other hand good tech transfer makes money overall rather than costing it. So, now the UK has left the EU and is nearing the end of the transition period that followed that, expect an increasing focus on value for money, selectivity as to which projects are pursued and maybe a need for earlier external funding for patent costs.

Article by: Andrew Bentham | 14 January 2021

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