Potential shift in landscape of university IP management

On November 27 2017 the Association of University Technology Managers (AUTM) released its annual licensing activity survey of universities, hospitals and other research institutions nationwide. According to the AUTM’s press release, the survey showed that “more than ever, academic research is fuelling impressive gains for local, state and national economies". The findings enable company executives to extrapolate the IP management strategies of commercialisation-savvy academic institutions. Such institutions are more aware than ever of the benefits of partnering with industry in order to research, develop and commercialise technologies invented in academic settings. These benefits include:

• generating additional research funding for academic labs;
• being an alternative source of revenue for institutions and their staff;
• achieving academic institutions’ mission to disseminate knowledge;
• enhancing local economies; and
• changing the world for the better.

Commercialisation is equally valuable for industry. Developing commercially viable products in academic settings can benefit industry through the following:

• expertise from academic labs;
• access to faculty members creating cutting-edge technology;
• the identification of novel therapeutic targets that can help to fill company product pipelines; and
• the esteem and reputation of academic institutions.

Further, industry is increasingly turning to academic settings to identify and train future employees.

Intellectual property is often the core of an academic-industry partnership. The AUTM’s report provides the following insight into the strategies which academic institutions have implemented in order to protect and commercialise their intellectual property:

• Invention disclosure activity has consistently increased over the past five years (by 8.7% since 2012), suggesting that, not only are institution employees becoming more engaged in the research commercialisation process, but institutions themselves are encouraging the development and disclosure of commercialisable intellectual property.
• Provisional patent application filings increased by 5.2% over the past year, indicating that academic institutions see the value of protecting commercially relevant intellectual property and are actively engaged in the patent process.
• New non-US patent applications increased by 33.6% from the previous year and have more than doubled since 2012, indicating that academic institutions understand the global nature of the commercial marketplace. Further, the willingness of often cash-strapped institutions to pay for costly foreign filings indicates that institutions are invested in the commercialisation process.
• Licences to large entities decreased by 16% from 2016, while licences issued to small companies and start-ups represents 70% of executed licences, suggesting a shift in the strategies used by institutions to commercialise their intellectual property. Specifically, the findings suggest that institutions may be seeking additional avenues of technology commercialisation besides seeking an established company licensee. Instead, universities are encouraging entrepreneurial activity in their faculty, students and staff. Supporting this notion, 1,024 start-ups were formed in 2016 alone, with 73.4% of start-ups located within the state of the research institution.

Overall, the report suggests that universities are more engaged in the research commercialisation process than ever before, and that academic technology transfer offices are implementing IP management strategies which reflect the encouragement of alternative commercialisation pathways. Instead of traditional strategies such as seeking established company licensees, technology transfer offices make IP decisions that also allow for (and often encourage) the commercialisation of university-developed technologies through faculty and student-led start-ups.