Commercialising IP

Commercialisation is where intellectual property is used or disposed of in return for payment, whether in cash, in kind or some other kind of recompense. There are different pathways supported at the University to support the commercialisation of your research: 

• Assignment -  in the same way a house can be bought and sold, IP can be transferred to another owner.    
• Licence - IP can also be licensed. This is similar to a ‘lease’ of a flat. The IP owner permits someone else (the “Licensee”) to use the IP in return for payment. If the IP has been used to make a particular product, payment will often be made in the form of a “royalty”. The royalty may be a percentage cut of the price the product has been sold for by the Licensee.
• Consultancy -  this is the provision of existing intellectual property, ‘know-how’ or a technical service to help an organisation solve a particular issue, provide advice or validate results through a contract for payment.  
• Knowledge Transfer Partnerships - this is a three way partnership with a business and a graduate or post-graduate to transfer the academic skills and knowledge (‘know-how’ or licence to background IP) to a business challenge to support the growth of that business.
• Spin-outs

Assignment:

An assignment transfers ownership. Once assigned, the original owner will lose their rights to the IP. If the original owner continues to use the IP after assignment and without a licence, they may risk infringing the rights of the new owner. You can assign ownership of part of copyright e.g. English language rights.

As an academic when you leave the University ownership is not automatically assigned to your new employer, in many circumstances the new employer will agree a licence with a revenue share. To discuss a possible Assignment either for your own intellectual property or from a third party to the University please contact us.

Licence: 

The owner of the IP remains the same. The licence can be limited in time, field, permitted use, and geographical area. 

The licence can also be limited in scope:

An exclusive licence means that the owner can only permit one licensee to use the IP and cannot license that same IP to anyone else nor use the IP itself.

A sole licence means the same as an exclusive licence except that the owner of the IP can use the IP itself.

A non-exclusive licence means that the owner of the IP can license to more than one licensee. 

Spin out: 

Spin-out companies are formed to act as vehicles for the further development and commercialisation of academic research. Forming a spin-out company is another way to commercialise intellectual property (IP) and it is the route typically considered when there is no existing business to approach about the new IP or because the technology has clear potential to generate many products and engage multiple sectors. Not all research is suited to becoming the platform for a new business and the University commercialisation team can help to evaluate the opportunity arising from your research. 

Revenue sharing: 

Successful licensing or assignment of University owned intellectual property usually results in the University receiving income.  This may be either as a lump sum or as a stream of royalty income over a period of time. The University has a standard scheme/policy (IP Policy) for the apportionment of its IP income which reflects the involvement of the individuals concerned, the host department and the University centrally.  Where any contracts or terms and conditions of funding which contributed to the creation of the IP require a share of licensing income, these obligations will be honoured. Each case is considered according to individual circumstances.