Intellectual Property & Assets

What are IP & IA and why are they important?

You might often hear the term intellectual property (IP) being used and wonder what it refers to. Maybe you know it relates to inventions but are unsure of what else it covers? Or perhaps you’re aware of copyright but not confident that you can identify copyrighted materials?

Intellectual property falls under the Intellectual Assets umbrella along with other assets such as goodwill, trade secrets, reputation, etc., and refers to creations of the mind; for instance inventions, written or artistic works, symbols, names and images used in business. All businesses have some form of IP which may be protected, for example by copyright, or through registered trademarks. IP rights allow the creators or owners of the IP to benefit financially from their work or investment.

It is worth noting that UK SMEs using IP rights report as much as 20% higher growth, income and employment than those that don’t so it’s important to consider IP at the outset.

Who owns the IP in a company / academic collaboration?

Collaborative projects often generate new IP, including Innovation Voucher projects and student projects. This may not necessarily be patentable inventions but know-how, designs, test data, reports etc. As such, businesses are encouraged to consider at an early stage what intellectual assets or property may be generated from such a collaboration and make sure an appropriate agreement of ownership is in place.

For this reason, the majority of contracts that are put in place between businesses and Higher Education Institutions (HEIs) to deliver a collaborative R&D project include clauses that refer to intellectual property. Central to a successful collaboration is the identification of what IP is involved, at the various stages of the project, and the agreement of how this IP is managed. Three different scenarios are outlined below which will illustrate the types of outcome that may emerge:

• Utilising Company Owned IP
• Accessing University Owned IP
• Joint Ownership of IP
  University Owned IP

Pulsetta, an Aberdeen based manufacturer of gluten-free bread and other bakery products, understand how important IP is to their business. They recognise the value that can be gained from properly managing their IP and advise all SMEs to consider their IP from the start.

Dr Karsten Karcher, CEO and founder of Pulsetta, said:

“Protecting your intellectual property is especially important in the food industry as people can easily copy your ideas. In terms of your ideas, I would always say IP asset protection has to come first. If you’re not protected you could lose them.”

Scottish Enterprise helped Pulsetta with an audit of its intellectual assets. The pending patents, the trademarks, the copyrights, the awards – all form part of the intellectual assets of Pulsetta.

Martin Layton, Intellectual Assets Specialist at Scottish Enterprise says, “As a business, Pulsetta has successfully built its proposition through its intellectual assets. Its intellectual property protection strategy is fundamental to underpinning its investor proposition and projected growth plan. It’s fundamental to their internationalisation strategy as well. They’re a great example of a business that is getting it right.”

Joint Ownership of IP

Joint ownership of IP rarely occurs and requires good communication and a clear understanding of the routes to commercialisation. The Research Collaboration Agreements, as devised by the Intellectual Property Office, adopt the simpler approach that one or other of the parties will own the IP, but the result of negotiations may be that the University owns the IP in field of use “A” and the Sponsor owns the IP in the field of use “B”.

The members of the Lambert Working Group on IP recommend that you avoid joint ownership where possible. If it is important that more than one party owns some IP, a better way forward may be to consider whether some of the IP should be owned by one party, other IP by another party and so on, rather than having several or all of the organisations participating in the project having a joint interest in the ownership of the IP.

Costs & Timescales

How much will the collaboration cost my business?

The cost of collaborating with academia can range anywhere from a short student project right through to a more substantial investment in a Knowledge Transfer Partnership (KTP).  (See our funding page for a more comprehensive list of available funding).

How long do the projects tend to last?

In terms of timescales to outcomes, collaborations can vary in length dependent on the project type. For example, projects can be relatively quick when accessing facilities for product testing and analysis. Projects going through the SFC Innovation Voucher Scheme are expected to be completed within a 3-month period while KTP projects can run for a number of years.

Standard Legal Agreements

Frequently asked questions for establishing partnerships with academia

From ongoing discussions with the Innovation Scotland partners (Scottish Enterprise, Highlands and Islands Enterprise, Scottish Funding Council and Universities Scotland) and in conjunction with other business support organisations including Business Gateway, Interface has created the top ten questions that companies would like to know prior to establishing a potential collaboration for research and innovation with an academic team.

This is not meant to be an exhaustive list, rather a way of encouraging businesses who do not have an established collaboration to find out more. If you have any other specific questions not included on this list please email info@interface-online.org.uk

What are the benefits to a business in collaborating with an academic institution?

Many projects between businesses and academic teams provide independent research or validation of new ideas for the company. Key benefits include reducing cost and risk, providing access to new ideas and horizon scanning, supporting the development of research skills, capability and profile. Accessing the knowledge and facilities in universities and research institutions can reduce the time for a business to take a new product, process or service to market.  Longer term benefits to businesses include expanding into new markets, staying ahead of competitors and increasing profits and turnover. From an independent survey 79% of businesses which collaborated with universities in 2013 reported an increase in turnover.

All businesses, regardless of sector, size or geographical location can partner with an academic institution and case studies to illustrate the benefits can be found here:  interface-online.org.uk/case-studies

I am not seeking to take on a graduate so what can Universities offer my business?

Scotland’s 23 Higher Education Institutes and research Institutions are home to a wealth of expertise, unique technologies, testing facilities and research ideas which can be used to solve problems or develop new areas for businesses for the short, medium and longer term. Working with researchers and academics can help raise a company’s profile and keep businesses at the forefront of their industrial sector.

Why would an academic team wish to collaborate with my business?

The universities’ research teams can benefit greatly from working with business. The research and development projects give them the opportunity to innovate in new strategic directions, employ graduates, provide work based learning opportunities for students and enhance teaching. Academic to business partnerships can take many forms, including providing ‘real-life’ projects and resources to help students understand the practical relevance of their courses or undertaking a one month to three year collaborative project with key milestones and deliverables.  There are many ways academics and businesses have worked together through a one-off project or large scale collaborations with other businesses in their industrial sector.

How do I go about finding an academic partner in Scotland?

Interface was set up specifically as an impartial, free service to connect organisations with academia from across all Scottish Universities and Research Institutions.  Our team work with businesses to understand their aims and objectives and through close relationships with Scotland’s higher education and research institutes, find the best academic match across all areas from engineering, arts, business schools etc.

Where can I find out about new technological developments in a key industry area?

It could be that technology for developing a business idea or product already exists at a Scottish HEI. These “off the shelf” technologies can be explored at www.university-technology.com . HEIs are constantly adding new technology so if something is not available now, it could be on offer in the near future. In addition, Innovation Centres have been established to support new developments and collaboration opportunities in some of the key Scottish industry sectors including oil and gas, construction, digital health, stratified medicine, sensors, industrial biotechnology, aquaculture, data lab:  www.sfc.ac.uk/FundingImpact/KnowledgeExchange/InnovationCentres/FundedInnovationCentres.aspx

How long will the project take to establish and complete?

Some projects can be relatively short, particularly for product testing or accessing facilities. Many are completed within three months, especially if they are funded through an Innovation Voucher. Others can take longer and are delivered in phases with defined milestones.

How much will it cost?

The cost of the project should be agreed at the start of any collaboration. The overall project cost can vary widely depending on the scale and length of the project. Some of the main ways businesses can partner with universities include:

• • The use of consultancy services provided by academic experts
  • Innovation Voucher funding – in kind or cash contribution required to match grant value
  • The use of university equipment or facilities, normally for a fee
  • Undertaking a strategic project eg. through a Knowledge Transfer Partnership or sponsoring of a post graduate student
  • The commissioning of contract research – where the business is a paying customer and owns all resulting Intellectual property
  • The commissioning of collaborative research – where there is a partnership between one or more universities and one or more companies, often with involvement of a public funding body
  • Staff exchanges, placements and secondments

Is there any funding available to help offset the costs to collaborate with a University?

There are a number of funding schemes to help offset the costs of the collaborative research and development.  Further information can be found here: interface-online.org.uk/how-we-can-help/funding

If the business has not previously collaborated with an academic partner then Innovation Vouchers, are available for up to £5,000 (which the businesses match with funding or a non-cash alternative such as use of facilities or materials).

What is full economic costing (FEC) and why does FEC need to be applied to the Higher Education Institute costings for collaborative working?

All Universities are required by the government to apply a Full Economic costing model. The principle behind FEC funding is that Research Organisations should indicate the full economic cost of a project which includes an attribution of the cost of academic staff time, and the institution’s facilities, estates & indirect costs. This helps institutions to understand the full costs of the research they carry out and supports their research activities on a sustainable basis, with appropriate investment in research infrastructure, including buildings, facilities, and staff.  In summary, Full Economic Costing is:

• • A standardised costing methodology for research
  • Applied at project level
  • Used by all UK Higher Education Institutions
  • Mandatory by Government for external research funding

Where can I find information about Intellectual Property (IP) and commercialisation?

All collaborative projects between businesses and academia will create Intellectual Assets ranging from know-how to designs or patents.  UK SMEs who have registered Intellectual property report up to 20% higher growth, income or employment, so it is an important consideration in advance of establishing any partnership. Intellectual property can be bought, sold or licensed.  A licence is an agreement between the IP owner and another party. It grants permission to do something that would be an infringement of the rights without the licence. Further information can be found here: www.gov.uk/licensing-intellectual-property During the process of scoping out the collaborative project, it is necessary that the company and academic institution have a discussion on the ownership of Intellectual Assets and Intellectual property that already exists and may be produced as a result of the collaboration.  This discussion should seek to agree terms for IP and confidentiality at the outset before any project work is undertaken.

To simplify the process of collaborating with a research partner, the Scottish university partners have agreed a series of downloadable, standardised legal agreements and documents including standard template for the company – HEI contract for an innovation voucher that will be agreed prior to project initiation interface-online.org.uk/how-we-can-help/guidance-collaborating/legal-templates

There are many other sources of advice available to help businesses understand Intellectual Assets and Intellectual property include:

• Scottish Enterprise and Highlands and Islands Enterprise have Intellectual Assets Specialist Teams to support companies registered in Scotland, and trading at either a national or international level. They are able to offer free consultancy and advice to assist companies in identifying and developing strategies for the management of the key intangible assets (IA) within your business. They also offer more intensive support, through a mixture of IA Project development support and Workshop programmes supported by in depth 1:1 consultancy advice.
  • Contact the Scottish Enterprise team at IATeam@scotent.co.uk
• The  Intellectual Property Office (IPO) has designed IP Equip – a new online learning tool that can help you understand the basics of IP.  It’s free to complete and can be accessed via desktops, tablets and smart phones.

Want to find out more?

• Contact the free and impartial Interface service on 0845 013 0536, info@interface-online.org.uk
• View the case studies to learn about Scottish companies that have benefited from academic collaborations interface-online.org.uk/case-studies
• Review the new technology opportunities which are available www.university-technology.com/home.aspx
• More and more businesses of all sizes are benefiting from partnerships with universities for research, innovation, skills and professional development. The Confederation of British Industry (CBI) recent report “ Best of Both Worlds”  talks about how to get started and succeed news.cbi.org.uk/reports/best-of-both-worlds/
• Find out more about UK University Technology Transfer