This is an HTML version of an attachment to the Freedom of Information request 'Details of Research and Enterprise Business Planning and Reporting Structure in Relation to Kevin Cullen’s Extensive Travel'.







Funding Your IP Portfolio
Dr Kevin Cullen
Director of Research & Enterprise
University of Glasgow
¾ AUTM Board
¾ Praxis Committee
¾ UNICO Board


With thanks to
¾ John Cairns, IP Manager, University of Glasgow.
3


Funding IP Portfolios
¾ Why invest in University IP? 
¾ Funding an IP portfolio
¾ Sources of finance
4


Why invest in University IP?
¾ Monopoly rights
¾ Strengthens negotiation position with potential customers, partners 
¾ Credibility
¾ Increases investor/company confidence in your research
¾ Increases probability of further funding
¾ Govt agencies – improves prospects of grants
¾ Matches public sector targets
¾ Increases University portfolio value
¾ Potential for commercial returns
5


Things to Consider about your IP
Your Global IP strategy 
¾ What can we afford?
¾ UK, Europe, US, Japan, rest of world?
¾ Scope of commercial “attractiveness” v affordable level of protection
¾ Difficult to achieve this balance on a University budget
6


Things to Consider about your IP
¾ Resources
¾ Patent attorneys
¾ Legal advisors
¾ In house resource
¾ All cost $$ - these need to be carefully managed and controlled
7


Things to Consider about your IP
¾ Defending IP
¾ Who pays? Who can afford to pay?
¾ Again, University budgets are not intended for this level of risk
8


Things to Consider about your IP
¾ Leveraging an IP portfolio
¾ “feel the weight”
¾ Clusters of technology rather than one single project
9


IP tactics
¾ Fundamental v supporting IP?
¾ Broad core concept or incremental supporting developments?
¾ Defensibility?
10


IP tactics
¾ IP as a weapon
¾ Monitor and block competitor patents – increases their value and 
likelihood of competitor trying to acquire these rights
¾ Means of giving YOUR university a competitive advantage over 
others
11


Sources of Funding for IP Portfolio
¾ IP is the lifeblood of Tech Transfer
¾ IP is an expensive commodity
¾ 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?
-
Quality of those disclosures?
-
Decision processes for deciding on protection?
-
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’?
15


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
16


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)
17


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
18


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.

19


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
20


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. 

21


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.

22


Remember That the biggest issues TT face are:
¾ Inefficient technology transfer
¾ Academic inexperience in intellectual property
¾ Need education and awareness raising
¾ Make engaging with process easier
¾ Industry unwilling to support early stage technology
¾ Too risky
¾ “Valley of death” between Research & Development
¾ University’s fund a project only to find no industrial interest
¾ High R&D cost and “burn rate”
23


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…..
24


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.
25


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

26


Our own experience in Glasgow
We also manage to keep our costs down by…..
-
having regular and rigorous reviews of the portfolio
-
Each payment milestone requires a case to be made
-
This case should always indicate interest from a potential 
customer

-
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.

27


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
28


In Conclusion
It is possible to get others to fund your IP
-
make sure you know the Government schemes
-
tap into company funds whenever you can
-
ask the academics if it is absolutely necessary
29


In Conclusion
It is possible to keep costs very low
-
confidentiality is good, but difficult
-
Non-patent IP can be cheap, but often inappropriate.
30


Thank you for Listening
x.xxxxxx@xxxxxxxxxx.xxx.xx.xx
31