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Funding Your IP Portfolio
Dr Kevin Cullen
Director of Research & Enterprise
University of Glasgow
AUTM Board
Praxis Committee
UNICO Board
With thanks to
John Cairns, IP Manager, University of Glasgow.
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Funding IP Portfolios
Why invest in University IP? 
Funding an IP portfolio
Sources of finance
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Why invest in University IP?
Monopoly rights
Strengthens negotiation position with potential customers, partners 
Credibility
Increases investor/company confidence in your research
Increases probability of further funding
Govt agencies – improves prospects of grants
Matches public sector targets
Increases University portfolio value
Potential for commercial returns
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Things to Consider about your IP
Your Global IP strategy 
What can we afford?
UK, Europe, US, Japan, rest of world?
Scope of commercial “attractiveness” v affordable level of protection
Difficult to achieve this balance on a University budget
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Things to Consider about your IP
Resources
Patent attorneys
Legal advisors
In house resource
All cost $$ - these need to be carefully managed and controlled
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Things to Consider about your IP
Defending IP
Who pays? Who can afford to pay?
Again, University budgets are not intended for this level of risk
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Things to Consider about your IP
Leveraging an IP portfolio
“feel the weight”
Clusters of technology rather than one single project
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IP tactics
Fundamental v supporting IP?
Broad core concept or incremental supporting developments?
Defensibility?
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IP tactics
IP as a weapon
Monitor and block competitor patents – increases their value and 
likelihood of competitor trying to acquire these rights
Means of giving YOUR university a competitive advantage over 
others
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Sources of Funding for IP Portfolio
IP is the lifeblood of Tech Transfer
IP is an expensive commodity
We need to be clever to maximise the value of our IP portfolio 
without breaking the bank.
The Key Things to Think About
1.
How much IP are you going to want to protect?
2.
How much IP can you afford to protect?
3.
If 1>2, then where else can you get the money from?
4.
Are there ways of doing it without money?
The Key Things to Think About
1.
How much IP are you going to want to protect?
-
How many disclosures per annum?
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Quality of those disclosures?
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Decision processes for deciding on protection?
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Who has ultimate control?
The Key Things to Think About
2.
How much IP can you afford to protect?
- do you have a budget?
- who controls that budget?
- do you have timescales for decisions on funding 
protection?
- do you have a profile of future costs of current portfolio?
- how do you decide to ‘exit’?
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The Key Things to Think About
3.
If 1>2, then where else can you get the money from?
If the budget is tight and you have good quality disclosures 
coming in can you:
- get Government Funding?
- will the academic pay?
-will the academic’s department pay?
- will a company pay?
….looking at these in turn
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Government Funding for IP (UK scene)
- Government has been very keen on the Knowledge Economy
- Has funded ‘commercialisation’ activities
- University Challenge Fund (University controlled funds)
- Proof of Concept Fund (competitive bidding)
- SMART schemes (require a company to be created)
- individual grants from EDA (needs very strong case)
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Will the Academic Pay?
1.
This can be a double-edge sword
2.
Shows the commitment of the researcher, but
3.
Puts you in a ‘weak’ position with the researcher 
- who may ask for assignment instead
- who could reasonably ask for a special deal
To make the budget stretch, consider sharing cost with academic
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Will the Academic’s Department Pay?
1.
Potentially a ‘triple-edged sword’
2.
All the issues of the previous slide PLUS
3.
There are sure to be committees involved 
somewhere…which makes it a very slow process.
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Will a Company Pay?
•
Most common after Government Funding in most cases
•
Company might be prepared to cover IP costs
- while exploring the potential of the technology
- in return for an option on the IP
- as part of a research contract
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The Key Things to Think About
4.
Are there ways of doing it without money?
Yes there are:
A.  keep the IP confidential
- This is usually an issue for Universities and research 
Institutions.
- Requires rigorous control of communications
- Requires rigorous use of NDAs etc….and a willingness to 
police these and act. 
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The Key Things to Think About
4.
Are there ways of doing it without money?
yes there are:
B. Use non-patent IP Approaches (will discuss in detail 
tomorrow)
- appropriate for copyright?
- trademark (not free but cheaper than patents)
- design rights?
All worth considering if you have no budget, but can be 
completely inappropriate for most technologies.
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Remember That the biggest issues TT face are:
Inefficient technology transfer
Academic inexperience in intellectual property
Need education and awareness raising
Make engaging with process easier
Industry unwilling to support early stage technology
Too risky
“Valley of death” between Research & Development
University’s fund a project only to find no industrial interest
High R&D cost and “burn rate”
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Our own experience in Glasgow
1.
We apply all of the thinking described above
2.
Our patent budget (from the University) is only £100kpa (CP 
260k)
3.
Our patent expenditure is typically £250kpa
- therefore, we have to make up the balance
- For 2006/07 Government Grants contribute £12k
- For 2006/07 Company contributions ca £103, 023
4.
We also manage to keep our costs down by…..
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Our own experience in Glasgow
We also manage to keep our costs down by…..
- having a rigorous assessment of disclosures
- IP due diligence
- commercial assessment
….must be a strong position and strong case.
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Our own experience in Glasgow
We also manage to keep our costs down by…..
- having institutional decision-making processes
- involving academics/Deans etc…ensures we don’t waste 
money in areas that the University does not want to support
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Our own experience in Glasgow
We also manage to keep our costs down by…..
-
having regular and rigorous reviews of the portfolio
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Each payment milestone requires a case to be made
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This case should always indicate interest from a potential 
customer
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External funding for the IP makes the case easier
-
It is very, very easy to waste money on IP going nowhere…keep 
an eye on it.
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In Conclusion
Funding the IP Portfolio:
- depends on having a decent portfolio to fund
- can be very costly but good processes (and a great IP Manager) 
can keep the cost to a minimum
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In Conclusion
It is possible to get others to fund your IP
-
make sure you know the Government schemes
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tap into company funds whenever you can
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ask the academics if it is absolutely necessary
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In Conclusion
It is possible to keep costs very low
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confidentiality is good, but difficult
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Non-patent IP can be cheap, but often inappropriate.
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Thank you for Listening
[email address]
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