UNIVERSITY TECHNOLOGY TRANSFER OFFICER

IP Due Diligence Playbook (TTO)

This playbook helps ensure that the University can commercialise intellectual property (IP) from academic research, while also meeting the legal requirements. ‘IP’ here refers to a product or a process.

IP due diligence undertaken at the earliest stages of discovery helps ascertain whether the IP identified or disclosed by an originator can be commercialized – typically either spinning-out a new company and granting it rights to the IP, or granting rights to the IP to an existing company via licensing, and so on.
This playbook is intended for technology transfer office (TTO) staff and academic researchers across all disciplines (SHAPE and STEM).

Key Points / Executive Summary

Publishing or disclosing your research outputs can have knock-on effects for the commercialisation of your research. There are some critical aspects you need to consider and discuss with your TTO before you place anything in the public domain.
IP can be protected and registered in a timely manner by your TTO, with no (or minimal) delay to publication or public disclosure.
IP is owned by your employer (unless a contract says otherwise) and this ownership doesn’t move when you change employment.
In a competitive field others may have existing IP, this does not necessarily exclude new related IP if it has a competitive advantage, your TTO will be able to map out the position.
The research use exemption normally allows others to use for research purposes, thus generally patents do not limit research in a particular field (though in certain countries this exemption may be less defined).

Understand any encumbrances on IP (such as joint ownership or needing funder consent to commercialise) and revenue sharing expectations, so that you are aware of as these matters impinge on the commercialisation process

Ascertaining ownership and encumbrances means working with disclosers of the innovation to clarify:

(i) Who had a hand in creating the IP – in their research group and by any other contributors. Determine inventorship – legally defined as the person (or persons) that formulated the inventive concept.

(ii) IP ownership rights: An inventor’s employer is usually the owner, but collaborators, partners and funders may also have rights. TTOs need to review funder terms around ownership, collaborator’s or licencee rights and revenue-sharing expectations.

(iii) If the IP is a material or software code, is it: wholly owned by the university OR from pre-existing public domain material with T+Cs OR from a collaborator OR under a Material Transfer Agreement? Check agreements for such third-party rights and encumbrances.

(iii) Rights to the IP granted in any commercial transaction, requires that the Institution must give certain legal assurances (such as warranties) over the ownership and protection of the IP.

Example questions to ask originator(s):

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Disclosure of IP by an academic for review of commercialisation potential

Other considerations

Identify creators, originators and contributors to the IP.

Ownership of IP

Contribution to the IP

Other considerations

Determine whether funders have ownership rights or revenue sharing expectations. This feeds into warranties that investors and licensees will expect, hence why this is so important to understand at this early stage, before commercialisation.

Encumbrances on the disclosed IP

Software (where applicable)

Open-Source Software or Free Software

The National Security and Investment Act (NSIA) allows the UK government to scrutinise and intervene in certain acquisitions made by anyone, including businesses and investors, that could harm the UK’s national security.

Should rights in an invention (in 17 sensitive areas of the economy covered under the NSI Act, called ‘notifiable acquisitions’) be acquired by any entities, then (subject to certain criteria) the University has an obligation to notify the UK government. So, it’s important to know upfront if the innovation/idea/IP lies within the scope of the Act.

Could the IP be used to carry out activities in any of the 17 sensitive sectors identified by the UK Government.

NSIA Regulations details

Check with the originator if the innovation/idea/IP falls under any of the sensitive areas and consider whether to make a voluntary notification under the NSI Act.

Export controls can apply to the digital or physical export of any goods, data, technology, documents, materials or software from a destination within the UK to a destination outside the UK. Export controls are needed for a variety of reasons, including national security and international treaty obligations. In the UK, the control of strategic goods and technology is undertaken by the Export Control Joint Unit.

Export control rules do not just apply to commercial export but to all kinds of academic activity, including teaching and research. This can extend to academic fieldwork, virtual teaching to students abroad, and presentation at international conferences. The TTO team will assess whether the activity will require an export licence, and if so, manage this on your behalf, or through other colleagues.

Will the University be exporting any goods or technology or know-how outside of the UK?

Please refer to the University’s Export Control Policy or specialist team for advice on the latest procedure.

Good research is underpinned by a culture of integrity and good governance. Research ethics are principles that guide how you should work with:

research participants, their data or tissue
artefacts that have a cultural or historical context
other researchers and colleagues
users of your research
others you engage with (offline and on/analogue or digital)

Research ethics are part of good governance and apply to all research conducted at the University. Failure to have an appropriate approval may be seen as misconduct.

Check to see if the relevant ethics approvals are in place for the data incorporated into the IP.

Consent from any public or patient engagement in the research may be only partially granted (e.g. only for research and not commercial purposes), so where required try to ensure commercial rights are secured during the research phase and well in advance of embarking on commercialisation activities.

Engineering and physical sciences

SHAPE (social science, humanities, arts for politics & economy)

Health and life sciences

Considerations for the Technology Transfer Officer Ownership Any encumbrances? National Security and Investment Act Export Control Ethical Governance Sector-specific advice for Technology Transfer Officers

Resources

Explore our ‘how-to’ guides and legal agreement resources to streamline spin-out company formation, help find investment and optimise licensing transactions.

PLAYBOOKS

How to guides explaining the ‘why’ and the ‘how’ of the commercial deal, ensuring an efficient process.

View Playbooks

TEMPLATES

A suite of lawyer-reviewed, legal Templates for everyone in the commercial deal to use.

View Templates

CHECKLISTS

Useful Checklists to ensure that all critical elements are considered in the commercial deal.

View Checklist

UNIVERSITY TECHNOLOGY TRANSFER OFFICER

IP Due Diligence Playbook (TTO)

This playbook helps ensure that the University can commercialise intellectual property (IP) from academic research, while also meeting the legal requirements. ‘IP’ here refers to a product or a process.

Key Points / Executive Summary

Considerations for the Technology Transfer Officer

Example questions to ask originator(s):

Disclosure of IP by an academic for review of commercialisation potential

Other considerations

Ownership

Ownership of IP

Contribution to the IP

Other considerations

Any encumbrances?

Encumbrances on the disclosed IP

Software (where applicable)

Open-Source Software or Free Software

National Security and Investment Act

Export Control

Ethical Governance

Sector-specific advice for Technology Transfer Officers

Engineering and physical sciences

SHAPE (social science, humanities, arts for politics & economy)

Health and life sciences

Contents

Resources

PLAYBOOKS

TEMPLATES

CHECKLISTS