Margaret Lawlor, Business Development Manager (BDM)

margaret.lawlor@ncl.ac.uk

19th March 2012

Research and Enterprise ServicesWhat? Why? Who?

Business Development Directorate Restructuring

• BDD underwent a review in 2009

• Over the next 12 months a new structure was proposed dispersing the central team into Faculty based teams

• Some new appointments

• Now , Academic & Commercial experience, Intellectual Property (patent) Knowledge

• We are here to help!

Overview of Research & Enterprise Services (RES)

RES Director Douglas Robertson

Non traditional fundingKTP teamLegal teamVenture UnitLocated centrally

FMSEnterprise

Team

SaGEEnterprise

Team

HaSSEnterprise

TeamLocated WithinFaculty

Enterprise Team in FMS

RES DirectorDouglas

Robertson

Assistant DirectorFMS Enterprise

Martin Cox

Assistant DirectorChanging Age

Graham Armitage

Changing Age team

Institute facing BDMNICR Phil Elstob

Proposal and Project Support Officer

Helen Kelt

Project Oversight & Engagement Officer

Pauline Davidson

Senior Clerical Assistant

Ruth Pollard

Institute facing BDMMarie Labus

Institute facing BDMLaura Rush

Institute facing BDMMargaret Lawlor

Proposal and Project Support OfficerLinda Wilson Clerical

AssistantClaire Forsythe

Clerical AssistantDot Steel

What do we do?

• Provide support for all aspects of commercialisation including:

• Funding/Translational grants• Consultancy• Commercial research• Confidentiality Agreements• Material Transfer Agreements• Patents• Licensing • Company spin outs

We can help you find commercial partners and we help setup agreements

Funding

• Joint Research Office, guidance on research funding, contracts

http://www.ncl.ac.uk/researchfundingtoolkit/

• Translational Grants will require BDM input

Translational Grants

• Increasing number of funding bodies require commercial partners:

• MRC: Development Pathway Funding Scheme, (MICA) MRC industry collaboration award

• NIHR, invention for innovation (i4i)• NIHR & Wellcome Health Innovation Challenge Fund• Input of ‘technology transfer office’: business plan, due

diligence, etc.• May require fairly rigorous project management – very

different to many other grants• We can find you a commercial partner

Other Funding

• Knowledge Transfer Partnerships (KTPs)• Shorter KTPs

University Fiona McCusker, fiona.mccusker@ncl.ac.uk

• Technology Strategy Board – need a commercial partner.

• CASE studentships

Consultancy

• Easy, Nothing new• - Facilities

- Knowledge/Advice

- Teaching

• With external - Company,

- Government Organisation, - Funding body

• Your time is valuable, don’t undervalue!• Confidentiality?

Personal Consultancy

• Should receive written permission from Head of department

• Everything must be out-with university (time, travel, expenses, liability insurance etc)

Commercial Research

• New Research - New Intellectual

Property?

• Projects with- Company

- Other External

partner (Uni, NHS)

• Your BDM can help find commercial partners and put right agreements in place

What to Consider

• Confidentiality Agreement (CDA/NDA)

• Material Transfer Agreement (MTA)

• Intellectual Property Rights (IPR) Contract/Agreement

• Always better to think about protecting your ideas before starting work.

• If you need a CDA/MTA contact you Business Development Manager (BDM) and we will help

RES Business Voucher Scheme

A business voucher for matched funding of up to £5,000 towards a wide range of Newcastle University services including:

• Consultancy services• Commercial research• Design• Facilities and room hire• Accredited training courses• Non-accredited training courses • Analytical and testing services

• Funding can be use towards

Travel

Attending or Hosting Events or Conferences

• Academic, Researchers, Postgraduates

RES Commercial Relationships & Collaboration Support

Confidentiality Agreement (CDA/NDA)

• What - CDA/ NDA (non disclosure agreement)

• When - With external Company/ Organisation

- Multi organisational grants

- External collaborators

- visiting students

• Why - Protects Know How

- Protects Patentability

- Once an Idea is disclosed it cannot be undone!

Material Transfer Agreement (MTA)

• Reagents

- Controls who uses your reagents (cell lines, Abs)

- Controls what is done with your reagents

“Cash in Freezer”

• Antibodies• Cell lines• Mice • Other Reagents

• Don’t undervalue the time and effort in developing reagents

• Your BDM will find you the right partner

Intellectual Property (IP)

• What is Intellectual Property?

- Know how, confidential information

- contacts (collaborators)/contracts, goodwill

- Trademarks

- Copyright and database rights

- Design Rights (registered and unregistered)

- Patents

Belongs to University/Inventor

If you think you have some IP contact your BDM and we can help

Patents 1

• In the ancient Greek city of Sybaris (destroyed in 510 BC), leaders

decreed:

• "If a cook invents a delicious new dish, no other cook is to be

permitted to prepare that dish for one year.

• During this time, only the inventor shall reap the commercial profits

from his dish. This will motivate others to work hard and compete in

such inventions."

The first account of a "patent system"

Patents 2

Senate of Venice, 1474:

"Any person in this city who makes any new and ingenious

contrivance, not made heretofore in our dominion, shall, as

soon as it is perfected so that it can be used and exercised,

give notice of the same to our State Judicial Office, it being

forbidden up to 10 years for any other person in any

territory of ours to make a contrivance in the form and

resemblance thereof".

Today:

New to the world (Europe); up to 20 years of protection

Incentive to innovate (grant protection)

Incentive to share knowledge (publish the invention's details)

Patents 3

GB patent No. 1769-913: Watt's improved steam engine GB patent No. 1769-913: Watt's

improved steam engine

Patents 4

• Give strongest legal protection for Intellectual Property for a defined period of time (20 years)in defined territory eg country but expensive

• To patent the Idea must be Novel, Inventive and Commercially applicable

• Must be enabling ie enough information for someone else to repeat

• Cannot patent a hypothesis

• Your BDM can help you decide if you have an invention and find partners

Much information only available in patents

Published elsewhere

Published in patents

found only in patents!

Patents: University Process

• If you think you have an invention

contact your BDM and we will help make the most of your idea

• Academic fills in IRQ/BOF with BDM’s help

• BDM will assess: Background (Freedom to Operate & Prior Art), Market, Business partner

• Decision to file (University & Inventor)

Licensing (BDM)

• Licensing useful revenue stream• Develop collaborations• Spreading development risk• Consider

- Type of IP being licensed (patent, software, trademark)

- Licensor (company taking licence)

- Type of license (use, exclusive/non exclusive)

- Market value/practice

- Bargaining power (how strong is you IP)

- Agreement

Closed Versus Open Innovation

Closed Versus Open Innovation

Source Henry Chesbrough

Open Innovation = More Opportunities for Newcastle!!

Company spin-outs

• Not for everyone

• Old University model: Discovery - Patent - Spin-out/licence/buy-out/market

• Collaboration at different stages

Drug Discovery Process

Increase in commercial value

Discovery (2-10 yrs)

Preclinical testing

Phase IPhase II

Phase III

FDA Review

and Approval

Post- marketing Testing

0 2 4 6 8 10 12 14 16yrs

University

Company spin-outs

• http://www.ncl.ac.uk/res/ventures/index.htm

A word about the Trust

• Very close relationships with Newcastle Upon Tyne Hospitals

• Joint Business Executive

• Joint team

• Split all income

Any questions please contactmargaret.lawlor@ncl.ac.uk

Tel 0191 208 3369