Speaker 1  0:06  
Hello and welcome to today's autumn webinar, Breaking Bad habits, how to discuss commercialization with academics. My name is Don vielle Young. I'm a member of Autumn's educate team and today's staff host. All lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for the presenters, we encourage you to use the Q and A feature on your zoom toolbar. Should you need closed captioning during today's session, the Zoom live transcript feature is turned on and available on your toolbar. Before we begin, I would like to acknowledge and thank Autumn's online professional development sponsor, Marshall Gerstein, we appreciate your ongoing support. I would now like to introduce today's speakers, Andrew teeny and Rachel Simpson,

Unknown Speaker  0:56  
hi.

Speaker 2  1:00  
Hi. Very warm. Welcome to everybody joining online. Really looking forward to this upcoming discussion. And let me start by just inviting Rachel to introduce herself, and then I will do the same.

Speaker 3  1:14  
Thanks, Andrew. My name is Rachel Simpson. I'm the assistant director commercial in the University of Dundee's Research and Innovation Services team. This means that my team of seven commercial managers looks at everything from disclosures to the creation of companies and licensing opportunities. And I also head up the university's research and commercial contracts team. So in total, I have about 13 people I've been in this area, working in this sector now for coming up to 18 years. So quite a few stories in there,

Speaker 2  1:49  
and we're looking forward to hearing them as well. So yeah, welcome again, everybody. My name's Andrew Tingey. I've got over 20 years experience in commercializing intellectual property. I've spent nearly half my career in tech transfer and in a variety of commercial roles. I now consult on IP commercialization for a number of different clients via symbiosis IP, but I'm a former head of tech transfer for Imperial College for a number of years, and I've also worked with I've almost lost count, but dozens of other universities on their commercialization projects I've seen in my career. I've kind of tried to toss it up the other day, I think, more than 1000 invention disclosures across my desk in one form or another, and I've had many, many discussions with academics. Some went well. Some did not go so well. So maybe between the two of us, we can sort of come up with some best practice ideas for the audience here. And in the spirit of open communication and discussion, this is not a slide heavy presentation. In fact, the one that hopefully everybody's looking at is the only slide in the presentation which just gives our names. So we're going to do this in fireside chat mode, and we're just going to talk through some of the key issues that we've come across over the years and how we've dealt with them. And indeed, you know, perhaps as a lead off, the British are renowned for our diplomacy skills. So perhaps that's, perhaps that's, you know, gives us an advantage in these sort of communications, and difficult communications, they are sometimes with academics. So let's sort of kick things off with actually getting those communications started. And Rachel, I'm wondering whether you've got experience in, you know, building bridges between the tech transfer office and the academics in the faculty, and how to go about doing that.

Speaker 3  3:51  
Yeah, so at the University of Dundee, my team have been crucial in creating quite a, quite a range of ways of discussing commercialization and helping understand what's required of them throughout the whole process by working with our schools and faculties to create organizations such as, we have commercialization groups, which are set up in in individual schools, and these are are basically led by academics who are most interested in commercialization, either they've they've been around the wheel with us before, or they're really keen on learning more about commercialization. And members of my team will take part and will share the types of activities that we're helping their schools and faculties with. They'll also tell us the types of opportunities that they're currently looking at, but also it's an opportunity for us to understand training in intellectual property and commercialization for everyone that's in their school that seems to either be struggling with it or they're about to do it. Particularly. Working with industry, or if they feel that they've invented something and they're trying to navigate, how to have, how to navigate to see, there's a question come in there, but how to navigate the whole process with us in the best way that gives them the most opportunities. So my team of seven, they'll they'll work in specific schools and and that generally matches their their research background as well. So most of my team have PhDs in life sciences or biomedical sciences, and that really helps, helps them bridge the gap with academics. And I think the other thing that we that we really see help is that we don't tend to talk about commercialization as such. We talk about helping them create impact from the research that they're doing, and that some of that might result in money, some of it might result in a license or a formation of a company, depending on what's most appropriate for them. So having conversations with them and understanding where they are on their journey really helps us provide the right sort of training and assistance as they're as they're developing as academics.

Speaker 2  6:10  
Excellent. Yeah, I think that's absolutely right up to notice. We've had a request in the chat to switch to the biggest speaker view. So there we go. Yeah, let's do that. Thank you, Tanya, and now you get to see us in all our glory on the bigger screen. So yeah, I think do you find that by that, by putting people into departments and faculties and maybe having them have responsibility for a particular department increases the sort of chances of contact between them and individual academics, from a scouting point of view. Do they get to know each other a little better by doing that rather than having people just generally pick up the next cab off the rank, the next invention, disclosure, wherever it comes from?

Speaker 3  6:57  
Yeah, absolutely. And I think, I think it deals with one of those sort of big, big comments that we get, which is, I don't know who to talk to, and so they've always got a first point of contact, because they've either met them in person, or they've been in a group, or they've been in a training organization with them. And so they know, you know, I don't know if you're the right person, but perhaps you can help me. I've, I think I'm, I've invented something, and I would really like to publish it. Then it's, it's that first point of contact that really helps. But also it's making sure that that my team know what happens next, so my team really understand the whole process, and they know that that these types of early conversations are possibly the most vital ones to pick up, because getting more people to talk to us and work with us means that we can do the most for them, rather than trying to try to deal with problems or trying to recover a situation which is much harder for us.

Speaker 2  7:57  
Absolutely, and there's something in that that want to return to as well, because just triggered another thought in me. But, yeah, I certainly felt that if you take time to build up personal relationships between individual tto members and academics, it just reduces that kind of barrier to disclosing new ideas. Doesn't make it so much of a chore if there's, if there's set meeting points, or they show up to the same meetings, or research meetings, or things like that, and get to know people and they're on, hopefully, you know, first name terms with them. They're well known. It just makes that route to get the invention disclosure in that flow of information, just that bit easier. But from what you were saying, it's actually kind of science led at the beginning. So showing an interest in the academic science can kind of get you in with them, and then you can Weedle out some of the more commercial ideas.

Speaker 3  8:53  
Yeah. So because we can, we can sort of talk the science. We're not, we're not at their level at all, but it means that we understand what motivates them. As a researcher, we also have access to see what type of funding they have, and therefore whether they're quite likely to be creating something in the next couple of years. So we get to get in there really early and help them set themselves up properly for when they have created something, or we can see that they're navigating quite a broad set of different types of funding requirements that that might make it more challenging to understand how to go forward so so by having that expertise, it means that we can, we can really demonstrate to them in person that we that we understand how to help them get to where they want to be, that that sort of trust element and building trust with them means that we understand which of our academics would really like, or feel that they would really like to form a company, or the ones that actually really don't, and and that they would, but it doesn't mean that we we basically let them get away with that as not forming a company, because sometimes, sometimes they, they they change. Their mind, I'm thinking particularly of an academic who's possibly later on in his career, quite considerably. He always said, No, I'm not, I'm not going to form a company. I'm not interested in forming a company. And we formed a company for him two years ago, and he's really enjoying it, and it's because he's just been around, been around the wheel of of what's the benefit to him, and he, he's, he really got involved in the fact that he could, he could take his 20 years of research out in into the commercial world, and start to see it in a very different way. So it's, it's possible to change minds. And I think if you have that development of trust from working with them for a long period of time and always being there to say, There's no such thing as a stupid question. Then then they trust you when they say, actually, I think I'm changing my mind. What could I do with this?

Speaker 2  10:50  
And that position as trusted advisor is something we should come back to as well. I should just reiterate what Don vielle said at the beginning. Feel free to disagree with us if you want or add your thoughts to the discussion, we're monitoring the chat. We're just going to carry on. And you can see that. We can see the chat, we will react to it. So if anybody does have any points that they want to raise or that they want us to cover, otherwise, we're just going to plow on. So yeah, maybe we are kind of tackling this in a chronological way. So you know that sort of first meeting with academics and in the context of research meetings and things like that. But also, when you sit down with them, they have got an invention disclosure. They say, Oh yeah, there's something I want to discuss with you. I don't know whether you agree with this, but I always felt that first meeting, they really do download kind of everything. And it's only after that when sometimes they miss out bits of detail, and they qualify stuff, but it's like a kind of bit of a who done it, you know, all the clues are there at the beginning. And if there's something there which is kind of like, Oh yeah, you know, there was this other institute involved, or something like that, you've really got to have your ears open in that first meeting, because that's the bit you're going to need to drill down on. Maybe it's the bit they don't necessarily want to talk about at that first meeting, but sometimes it can be a really vital point about IP ownership or publication or disclosure or something like that. They tend to talk about it in the first meeting more than they will in subsequent ones when they're getting more excited about the idea and the commercial potential. Have you seen that?

Speaker 3  12:19  
Yes, absolutely. So I think, I think one of the things I do talk to my team about a lot is that that first conversation isn't getting them to fill a form in. So we have, we have an invention disclosure form, which is about capturing all the different information, but that first meeting isn't about isn't say, go and fill in that form and then come and talk to us, because then no one likes starting off with filling in the form, so that that first first meeting is to is for for us as experts, really, to get in and ask those sorts of questions in a really open way to try and find out as much as possible. And then we tend to pre populate the invention disclosure form for them, and then send it to them saying the one thing we didn't discuss, or it looks like, you know, you say that you're the sole inventor of this thing, but actually, I can see that you've had five collaboration agreements with 17 different institutes. I think that that's going to be quite hard to you know, are you sure? So we do have those types of conversations, but it also it means that when we're having those conversations about them, it's it's telling them that I need to know this information in great detail as soon as possible so that we can help smooth that journey and not have to discover this five years down the line. I just see that Laureen has asked the question, who

Speaker 2  13:36  
initiates that first meeting? That's a really good question. I think. It's different almost every institution that I've worked out or for. So we were pretty lucky at Imperial in that, you know, we basically just opened the door and in would come pretty much routinely, 360 invention disclosures a year. Just coming in through the door. You just have to open it and it'd be like, it'd be like, you know, opening a letter box, and all these letters come pouring out of it. It's absolutely RAM full. And yet, other universities been really down to the tto to, as you say, complete that form, because the academics just don't want to do it for whatever reason. So I think at Imperial, it was a case that it would be that the form would be the trigger to say, look, I've got something here. Come and talk to me about it. So the tech transfer officer would then go and respond to that. And in fact, you know, we'll come back to stage gates later on, but we were on a kind of, you know, a two week response time to follow up with the Discloser in that case and have that first meeting. So it would be initiated by the tech transfer office. But equally, at many other institutions, it's sort of the other way around. And it it almost seems to be a cultural question as to whether they see that form as like, you know, the gateway into the land of commercialization. Or whether it's the administrative tool I don't really want to do, and then the tto are going to pick it up and make sure there's a proper record of the invention.

Speaker 3  15:07  
So I'd say, from from, from our university side, it's, it's definitely us going out and uncovering so we have, we have academics who we would say, are our experienced business users, and they send us invention disclosure forms when they know the right time to send it, so they send it, and we work through that in a very process led way. But actually, for the majority of our disclosures, we have active scouting. So every fortnight we have a scouting and engagement meeting, which is where the team talk about who they haven't yet spoken to, who's new, who they are actively engaging with who's on their target list, and we do that by looking at the funding types. So if we have Junior PIs who are in the first year of their first funded research project, they're they're unlikely to have a disclosure at that point, but we will mark them as needing to have a conversation in the next 18 months to try and tell them that as soon as they feel like they're they're developing something that has legs, then they we're here to help them, and we can help them navigate that in the same way that even even when they're quite Junior and they don't have anything, sometimes they actually have a business idea that's outside of their realm of work. And we can signpost them to our Center for Entrepreneurship, who helps work with startups. So I think there's, I see it, the scouting that we do, the active scouting, is an opportunity to to embed them within the university and as a total support system. So So we're, we're here for all aspects of it, but those scouting meetings also uncover problems. It means that it starts to develop that trust. And we also actively manage the scouting opportunities by not overworking some academics as well. So some academics, we know they've just got a massive grant, they really need to get their head down. Then we won't

Unknown Speaker  16:57  
really, yeah, and

Speaker 3  16:58  
because again, is that it's that they're people with with with aims and objectives that they want to do when we're here to support and fill in with that, rather than annoying them by constantly tapping on the door and seeing what have you got.

Speaker 2  17:12  
So we got another great question here from Christina Catalano, so does the tto then make decision to file a provisional from the invention disclosure. Does a commercialization team decide when to file it? That's interesting. It depends on the sort of configuration there. But by and large, certainly, my experience is that person who does the first kind of interviews, they get a feel for the opportunity, so they make the decision. You know, I'm a big fan of sort of devolved budgets and things like that. So let people who understand the projects and are closest to the projects make those decisions on filing and prosecution. Does every invention disclosure equal a provisional filing? Yeah, well, that's the second part of that question is interesting as well. So I know some institutions only count it as an invention disclosure when there is a filing. So really, the only invention disclosures you're going to get are provisional filings associated with them, or there's some other form of IP, whereas, certainly at Imperial many others, it was a case of, we have an invention disclosure. And then, you know, there may or may not be IP associated with it at that point, but we can always go back to it, you know, to your example of somebody getting a big program grant or something like that, you know, big drug discovery type magnitude grant at the beginning, there probably won't be anything or nothing that you could really file on. In fact, it wouldn't be a good idea to file it at all, you know. So you're going to wait until later in the grant cycle before you can make that decision. So there you could have one or two, maybe even more, disclosure forms without actually having any IP associated with them at that point, and maybe you cluster them up later on. But I know, you know, I don't know how that debate has moved on in the last few years about whether there's a right or a wrong way to decide what an invention disclosure actually is. But you know, if you obviously, if you record everything, your ratio of filed IP to invention disclosure is a pretty low, whereas if you only count it when you're going to file something, or there's all this, you know, some sort of form of IP there, then that ratio be much higher. It's you're not always comparing like with like, though, I think that's what we're trying to say. So from

Speaker 3  19:24  
from our sides, we because we have a small team, then I can, I can start on something that you raised earlier, which is that we operate a Stage Gate process, and that starts right at the disclosure stage. So so we a disclosure doesn't always mean a provisional filing for us and and so we have a Stage Gate process, which means that all of my team, if they're working on a disclosure, it doesn't count for our records as a disclosure. Until they have had that discussion, they've looked, they've done some provisional due diligence, and they they know that there's some data, there's there's a real thing to look at. And that it's, it looks like it will have legs from provisional outside look from, from one of one of our team, the Stage Gate one is that they then have to bring it to our IP and commercialization meeting. So, so the tech transfer manager has to present that, and that stage gates is to say that there is something here, it probably needs a patentability review, or we don't think it needs a patentability review because it's not patentable IP. So we deal a lot with software now, and we're not generally thinking about patenting at the first stage, but also it's about allocating team resource to it as well. So that stage gate one basically says, yes, there's something there. Yes, I'm happy for you to continue working on it, and we'll also send it to our patent attorneys for initial patentability review. Because that has budgetary spent for us, it also means that sometimes we can get we can start on a process of allocating a small budget that allows us to get a market research report done for it as well. So we're starting to build that picture for each disclosure that comes in. And then the Stage Gate two is where we've got a patentability review back in from the attorneys that says, Actually you've got something here it marries up with there being commercial or unmet need for it, and that we basically say, Okay, on the balance of probabilities, it's worth filing. It looks like it's about the right stage to file. So we'll file. Our filing rate is about half of our disclosure rate, I would say. And so we, it's not necessarily that we lose half of the disclosures, but half of them are not ready. And so we'll, we'll keep working on them, and we might lose about 10% because they're, they're just not there, or there just isn't any anything for it. So I think that that pretty much deals with Christina's question.

Speaker 2  21:49  
So how is that? So we've got one from Laureen again. How is the tto made aware of research so they can scout? Yeah, I think you've got to keep your eye on the on the News Feed University as well. And if you can get access to database of grant awards, yeah, again. So

Speaker 3  22:08  
we have, we have a database so we we can search for new awards and and we can also look at by being in those commercialization groups in the schools, it also means that we know who's got a big grant coming in. We also know who's who's also planning to work with industry, or we can we know that industry is coming in so they're having a discussion with us. And so we also want to manage those people that aren't turning up on the research funding side because they've got existing funding on their own core grant. But it also means we can have that discussion with them about how to interact with industry better. And so we'll not everything will go through the Stage Gate process, because a lot of what my team does is also do really good deals on industry collaborations that might lead to licensing opportunities in the future.

Speaker 2  22:59  
Yeah, definitely. And I think, you know, before we, before we leave Stage Gate, it should be, should we say, if that process is open, can be a really good kind of diffuser of complaints from academics as well. One that was, yes, you know, I've heard leveled against tto staff frequently. Is that, well, I put my invention disclosure in, I didn't hear anything, okay? And the academic would just assume that you're just not doing anything for weeks on end. Whereas, in fact, you know, you could have a tech transfer manager who's who's busy doing prior art searching, or busy looking into the market, or busy looking into competitive approaches and things like this. But unless you kind of communicate that or that they understand that there's a there's a process, and the, you know, the opportunity is moving between processes. And I, as I mentioned earlier on, you can even have, you know, what's effectively a service level agreement where you're saying, Okay, well, we're going to take two weeks to have the first meeting after you fill the form in, and then maximum of a month will decide, let's say, a month, where we decide where we're going to file a patent on it or not, or whether there's another form of IP protection which is more suitable in this case, or it's too early at this stage to do any of that. So you get all these things out of it. And you know, I think we, we live in a society now where people expect information, kind of almost on demand. Have you ordered something through Amazon, you are bombarded with information, text and emails saying that like, you know, it's left the distribution center. It's on the way, you know, the courier has got it is about to stick it through your letterbox, you know. And this all happens without you having to do anything, and it's just to make sure that you don't bombard them with requests for what is happening. And yet, with with tech transfer, it's perhaps not quite at that level yet where there are gaps, where people are working hard on opportunity, but the academic doesn't have necessarily visibility of that going on, and just assumes that nothing's happening, and that can be a source of frustration for them. So you know, are there ways in which, you know, publicize. In that stage gate having sort of stats for how things move between one or another. You know, yeah, yeah. Does that happen at the Dundee? Yeah,

Speaker 3  25:08  
yeah. We do that. So, so again, that's where the the trust relationship with the academics comes in. So, so all of our tech transfer managers are expected to keep their the disclosing inventors aware of what stage they're at and what discussions happening next. And it, and I'd say it's not, it's not foolproof, still, because it doesn't matter sometimes, how many times you tell someone that that you know the next meeting isn't going to be for another month, simply because we're trying to convene a panel, they still hear, you know, we're going to convene a panel, and they expect it to be next week, because the next, the next stage that we have in our stage gates is if we have particularly something that's coming up towards being a spin out opportunity is that we bring in externals to make an object help us make an objective decision. Because the other criticism that's leveled at us is that we have our pet research areas that we always support, and then we have research areas that we don't support, which isn't true. It's just that some research areas are far more commercial than others, yeah. And so by bringing in an expert panel, and so we have, we have lots of friendly investors and commercial leads who are really happy to join a panel for an hour, look at an opportunity with a business case, interrogate it and tell us whether or not they feel like it should go to a spin out, or tell us what information, extra information we need in order to progress that frequently what we find is that the panel tells us exactly the same as what we've been telling the academic research team for possibly a year, But because it's external and objective, then it goes down a lot better, and it means that we are quite sure that the decision making is is appropriate for the business opportunity, particularly important for us with spin outs, because we want them to go out at the right time,

Speaker 2  26:54  
absolutely. So I noticed there was another question, which seems to have disappeared again, which is odd, but it was, this was about, okay, but if you're into commercial negotiations, how, how much to keep them informed academics, this is, well, I think they're important stakeholders. And I think if there's one thing that I could perhaps change about a lot of my time actually, in tech transfer, would be that I want to communicate a lot more with the academics, almost over communicate. I don't think I did enough of it. And I almost kind of thought, well, once we get to the negotiation part, that's me. That's, that's what I do, right? And so, yeah, leave me to it, and I'll come back and I'll tell you when I've got a deal kind of thing. And that can That in itself, can lead to frosty if you shut out of it, that can lead to frustration. I don't necessarily want to participate without the extreme. Obviously, you can bring the academic into those commercial discussions that, in itself, can cause issues. Yeah, I've done many a training session where, you know, I've had a little session about things, things academics have said during commercial negotiations or meeting potential licensees or partners for the first time. And it tends to come out a little bit unfiltered from academics at times. But yeah, so maybe don't want to go as far as that, unless it really is a technical discussion, in which case they're the best people to have in that meeting. But if you're if you're kind of haggling over financial terms, or there are complex parts of contracts and there's legal points that you're trying to address, then they're not, they're not usually the best people to contribute to that sort of discussion, but they should certainly not be aware of their time. It isn't, though, but they may want to be aware of what it is, because otherwise, why does it take so long to negotiate a contract? Well, you know, then you might want to take time out and say, well, because if we signed it as it is, you'd be personally liable for, you know, the value of your technology, and they would sue you for a lot of money. So, you know, trying to convey to them, actually, a lot of that work that you're putting in during that negotiation phase is protecting the position of the inventor or the institution, the University where you're licensing from, is quite an important one. They need to understand that and why. You know, you're not just being bureaucratic and, you know, annoying for the sake of it, you're trying to make sure that they are not on the wrong end of a really bad arrangement at the end of it. Yeah, and communicating that, I think, is important,

Speaker 3  29:20  
another discussion that that I often have, and I have felt that it works quite well, particularly with industry collaborations, is that I tell the academics that I'm there to negotiate about the dirty stuff, which is the money and they they get, you know, I'm there to keep them clean and away from the grubby side of, you know, arguing about whether they pay 100,000 pounds more than they're expecting. That's, I can be unpleasant about that, and I can be hard nosed about it, and but it, it shouldn't affect the scientific working relationship that goes on behind that industry collaboration or that licensing agreement. And that's, that's why it's what I. So that they, that they they step away from that. I can tell them that I'm I'm doing it, and I can tell them how far advanced it is, but they shouldn't be involved in the money side of it, because they I want them to stay focused on the science. I want them to be there and have a really good working relationship behind that. And that's that's why it really helps. But absolutely, as soon as, as soon as all of our deals go into the contracts team, then they're heavily managed to make sure that there's good communication going on about where it's got to absolutely as soon as a negotiation is looking like it might affect one of our researchers abilities to publish. Then, then they're absolutely told, you know, and really working hard to make sure that you know this is a deal breaker for us, because it's your it's your ability to publish that they're pushing on. I'm going to work. I'm going to stay hard on that. Or, you know, when it comes to the IP terms, they can be incredibly complicated to an academic who hasn't been wearing that wheel before. And again, it's, it's protecting your their ability to do the research that they need in order to have a career, and it's and it is about moderating, moderating, how you explain it to different academic teams, your more experienced ones can sometimes actually have total misunderstandings about IP and publication that the younger ones don't have.

Speaker 2  31:19  
Yeah, between tto factory runs and practice spinning off and deal negotiations begin when factories spinning off. Yeah, let's, let's come back to that one, because that's a really good point. I was just going to mention that, you know, just on that note, there have been a couple of times where there been unusual or restrictive clauses relating to research or other activities, publications and things like that. And certainly I felt the need, obviously, yeah, I communicated it, especially if the academics, yeah, that's fine, you know, we just want to get the deal done, kind of thing. Well, okay, I just want to spell out for you what this means in bullet points. Okay, can you just drop me an email back? You've seen that and you're happy with it, because I don't want it because I don't want it to be any misunderstanding about what we're about to sign up to. You know, in the unlike, event that somebody doesn't like it, after they have to sign the agreement, it's going to be too late. So, you know, it just, it's about sort of covering yourself slightly. That's a bit of a negative way of looking at it, but just double checking that the academics aware of what exactly you're going to sign up to if they're putting the pressure on and say, Well, I don't care about that. It's fine. Okay, well, let's just double check that, because this is what it means. You sure you're okay? Yeah, okay, fine. We'll do it then. But, you know, don't come back in a year and say we're not happy about it, because, you know, this is the situation. Okay? So, yeah, I'm just gonna say,

Speaker 3  32:41  
I think, I think it's where it really helps that so I have a legal background as well as a scientific background, and it means that I'm, I'm always really aware of, basically belt and braces to to make sure that that the instructions I have and that my team have are confirmed as, yeah, you know, I'm there. I'm pretty much trying to protect myself as much as as much as the academics, when you know it's got to a really hot point. And basically they, they, they are quite happy that they can proceed despite, despite me saying that, actually, I think it's going to be very difficult to navigate it. But are you happy to do it? And absolutely, are you happy to do it? You are happy to do it. Okay, that's, that's going on the file, right?

Speaker 2  33:25  
We're doing it, yeah, we're signing it, yeah. Okay, so question from a dean that we need to go back to a fair balance, okay, this is a, this is a really good one, you know. So you're spinning out, and all of a sudden they you're the academic is essentially now on a different side of this negotiation. So how do we get a fair balance between the tto and the faculty and the spin off when it's the academic who's going to be centrally involved in that spin out? Now I can mention the way we handle this at Imperial, because, yeah, effectively, then the academic is negotiating against their own employer, and there's personal benefit involved. So it can be pretty sensitive, particularly if they don't understand, as you say, some of the nuances around the agreements or the commercial terms, or things like that. And so at Imperial would normally require that there is somebody who can represent the spin off or spin out and operate on behalf of the spin out in those negotiations, be it, you know, legal representation or a commercial advisor, or, you know, the future CEO of that company, or whoever, somebody who can act, not impartially, but on behalf of the company, not necessarily the founding academic, but on behalf of the company. And they'll be the ones negotiating the bits that could be negotiated of the deal. Deal, because that was the only way we felt there wasn't really doing that, because otherwise you're going to get, you know, horrendous arguments with your own faculty staff, essentially,

Speaker 3  35:10  
yeah, now we do the same thing. So, so when it gets to the point of spin out, we can provide, we can provide the team, the commercial team, with advice. Well, well, recommendation of lawyers that we've worked with before, who are familiar with with forming spin outs, and they can choose. We tell them that they have to choose that themselves. So it's not one that we're going to choose. And And also, we then walk them through the whole managing conflicts of interest. And so hopefully they have got a commercial lead if we've given them permission to spin out at that point. So most of the negotiations will be like that, Andrew and we'll, we'll work with the commercial lead or the commercial the CEO designate that we have in place. But they, at the same time, the academics will get quite a lot of training in terms of managing conflicts of interest, and that there will be times when we basically say, No, we can't, you know, I can't advise you on that. You need to talk to your own solicitor about that. This is, this is the end, and that can, that can be really hard for them to navigate. And so one thing that a process that we have in place is that we operate a spin out Academy every year, and so all of our academics and even PhD students that are interested in forming their own companies, they're encouraged to take part in. It's a two week course that they can take part in. It deals with basically, they're given example projects. So it's not their own project. They can bring their own project if they want, but they're encouraged to work on something cold they don't care about, and then they work through the whole process for what it's like, what's involved, how to finance, how to bring the money in, how to talk to investors, the implications on them, the time commitments, the what happens next once you've spun out all of that, all of and it means that they're familiar with it before they're going round the circle with us. I would say still again, it depends on how much they listen and how much they take part, but it's it really helps us to have trained academics who are really sure that they want to do it. We had an investor here last week who said that one of the conversations he has with academics very regularly is is get used to getting bored with the sound of your own voice, because you're going to, you're going to say, you're going to say the same thing 300 times in a year when you're trying, when you're talking to investors, and you have to be you're going to get bored with it. It's not like research, where you're constantly talking about the next new thing you've done. It's the same story, same story, same questions. You have to be enthusiastic for all the same questions. So all of that training is how we help navigate that balance. And

Speaker 2  37:48  
let's, let's indeed come back to training, because that's an important topic. And I time is galloping on. So you know, knowing us to we can talk for a long time. Gotta stay we gotta stay within the summit. So it was about, how do you manage outside activities and conflicts of interest involving inventors who have their own startup companies, and indeed, they can actually have shareholding and completely different companies as well, not necessarily their own startups. And how do you distinguish IP generated after the company has spun off? Oh, yes. So, I mean, there's a whole section here on conflict of interest, and I'd say there's an opening gambit that many academics that I've come across seem to be blissfully unaware of what conflicts of interest are, or that they be in any way problematic to what they do, and explain to them what a conflict of interest is, let alone what the process would be to resolve it can be quite difficult, but you know, if they are in a position to influence financially, something that you know should be unrelated in the third party transaction, you know there is a clear possibility for conflict of interest there. Now, in terms of interest, in your thoughts on this, but distinguishing between IP generated after a company is spun off, so it's nice if the arrangements for that are clear. So if your academic is allowed to do a certain amount of time with the company under whatever arrangement, maybe consultancy, or something like that, and anything they invent there, yeah, okay, is going to go to the going to go to the company the rest of the time you'd expect it to be disclosed, and, you know, licensed or assigned, or whatever the mechanism is to the company on The Normal University process. Do companies abuse that? Do academics abuse that? Yeah, of course they do. Yes, right? The question is, you know, are you really going to invest time in going after that? Because, again, my feeling would be, unless there's some sort of blatant misrepresentation going on, you know, like an academic is only doing one day a month for the. For the spin out company, and yet all the inventions seem to be owned by the company. You know, you might want to take a look at that. Otherwise you're going to end up being the IP police. And that's not the way to be popular with the academic cohort. I

Speaker 3  40:13  
would say one of the, one of the important ways of testing whether that's going to be a problem is whether there's, there's a significant overlap between what the spin out company is going to do and the academics, core research we have. We have one spin out where this is a constant effort to try and navigate the IP because if we're not careful, everything gets considered to be an improvement and goes into the company. And that's and that's because the way it was set up was that there's actually almost perfect overlap between the company and the research activity, which means everything that that academic does has to be reviewed constantly, because it shouldn't be like that, but it is, and it predates me, and that's and that's, it means that the spin out company should be, should be discrete. It should be the commercial output of of a of a of a body of research that's now ripe and ready to go out and be invested in, and to take risks on its own in a way that can't be done within a university. And that should be different to the active research. And that should be the interest of the commercial company. And what we're trying to always trying to avoid is a pipeline situation where we've pipelined into the university, and that that is very hard, and it's not always on a case by case basis,

Speaker 2  41:32  
absolutely. And I think you know, again, it is on a case by case basis, but if you have academics who want to deliberately misrepresent what's happened, you know, essentially not tell the truth on forms. Or, you know, determine that they're going to bypass the system somehow, you've got to make a judgment then about, is it really worth you while? You know, going into battle on that and saying, Actually, we're not going to, we're not going to allow this. Or, you know, do you want to be the IP police? You know, because you're just going to take an awful lot of time. You will not be very popular with anybody, usually when you get something like that, unless there is a large scale. But, yeah, there

Speaker 3  42:12  
is another, I suppose it underlines another, need for really good due diligence at all stages and then ongoing due diligence, really. So one, one issue like that that I've dealt with in the last couple of years has been a licensing opportunity. So this was a disclosure that came in. It was patentable. We decided to patent it because there was a licensee on the hook already, but the due diligence that we did identified that one of the academic team was a key part of that licensee. So that's when you start to have the difficult conversations and say, unfortunately, I need to, you know, need to move you out of it. Are you? Are you a director? Because you seem to suggest you're a director, and then it was like, no, no, they're not a director. So and then, well, you're there on the website. You know, it's just then you have, you do have to have those conversations. And then, actually, for what we tend to do is we have a discussion with the Dean of School about saying, this is we found a conflict of interest that we need to navigate. I think, you know, they now need to make a choice as to whether they're in that company as a licensee or, I'm afraid they'll need to find another route for for patentability and patenting because we we would have a conflict in dealing with that, and we can't take it any further.

Speaker 2  43:34  
Absolutely. I've had an analogous situation where the academic on staff was actually pressurizing me to lowball all the commercial terms, and he turned out to be a director, not exec director, of the company it was going to and didn't disclose that. It was only when I got the investment brochure for the potential licensee that I found that out. So it's hard to, you know, believe that it's not deliberate sometimes, but maybe you've got to give them the benefit the doubt most of the time. But anyway, let's, let's, let's move on to another really good question here. So

Unknown Speaker  44:15  
training, I'm trying to

Speaker 2  44:16  
Yeah, training so just in time versus want to just in time basis, when they're ready to launch a company, rather than going to a training, how do you get people to participate? So, and Laura has added a supplementary point there. With respect to training, we work together with center directors and asked a dedicated time at which we can approach PIs at faculty meetings, half a day. Extension, yeah, we prepared presentations for IP new ventures and business development teams, absolutely so, hijacking another meeting and getting IP training in his good way of doing it. I think, yeah, this is a really important point, because quite often the temptation is to sort of, you know, refer people back, especially if something's gone wrong, like they've published something and then, well, I want to follow pattern on it now. Yeah. You know, it's kind of like, did you, did you go to the training? We did a fee and things like that. And they'll say, Oh, we can, yeah, you know, I don't have time, or I kind of find it, can't find the information, etc, etc, right? So, how do you tackle this again, as some suggestions, for example, is making, you know, pre recorded training sessions of this type, where people are talking about IP and things like that, available on the internet on demand. So in that situation where the professor is suddenly contemplating a spin out, they can access all this information if they want to, and go through what's effectively a small training course, or getting some key points on demand when they do have time to do it, and making the sessions as accessible as possible. So information given in different formats. People are neurodiverse and don't always want lots and lots of written information, thinking about other ways in which you can convey the necessary information, breaking it down so it's not very word heavy to concepts and things like that, and people can delve deeper if they want to, and generally making it fun to participate as well, because word will get around them that it's actually okay. That wasn't too bad. Maybe we should go to this because it was quite an interesting session on spin outs. If you get that being discussed amongst the faculty, then you're sure get a few more wanting to register for the next one that you run. Just run it regularly. Get into that cadence of running these things regularly. So it's not one a year. I know. It's a commitment of time and things like that, bringing in externals. So it's not just the tto talking or time getting people from outside, peers, people who've been there and done it had their own spin out, perhaps adding their perspective to it. So it's not just the voice of the of the tto, all these things can improve participation, for sure. Yeah, and I agree it is an issue. And you know, academics don't want to invest time in looking for stuff. They've got to be able to find it easily and on demand, I think is that is the headline on that.

Speaker 3  47:04  
I think this is where our spine academies really help. But I think the other aspect with dealing with professors and sort of senior, senior research leads is that we sometimes want to, want to tap into their team, and we'll ask them whether or not they have a postdoc who's really keen to be in a company. Some some postdocs, they realize that, you know, the research environment isn't for them in a university situation, but actually they quite like to go and experience what it's like to form a company, being an early stage company. They're very driven. And so sometimes you can get the postdoc to be on the training, the spin out training, and they are. The whole thing is that they want to be in that company. They're going to be one of the first that the CTO. They're planning to be the CTO go from being post op CTO. They want to know how they've got so much enthusiasm for how the whole process works that we can work with them, and it helps support the professor. Because frequently the professors don't want to go in as a full founder. They want to go in one day a week. They want to have their shareholding beyond the advisory group, but they want to be non Exec. They don't want to be in there forever. And actually their research is what motivates them, but they want to, they want to keep a hand in, and it's, it's what they want to do. But actually the postdoc can frequently be the person who goes in and they're full time at it, and and having them as a super educated helps form a team behind it. That That means it's more likely to be successful as well, and absolutely in terms of not engaging. I must say that's where our Stage Gate process really helps as well, because they we have a spin out group, which is our executive team above my team, that will rubber stamp our decision to make a spin out group, but only if we've gone through the process so so that there isn't a back door. It's sort of cutting off that back door where a professor can say, I want my company. I want it now. And they there's someone that they can, they can go and talk to and say, make it happen. And it's and they say, I'm afraid I can't, because actually, we need to go through these justification processes and and we're not slow. I mean, literally, you know, the constant, the constant, everything is very slow. I've had to do a an expansive email today saying we're we're not slow. What we're driven that the Stage Gate process follows the the maturity of the opportunity. That's what it's there for. It's not, we're not interested in speeding up the Stage Gate process. It's driven very much by the opportunity and the needs of the opportunity. And if the opportunity is ready, then the Stage Gate process will come in make a decision that enables it to go forward. And it's that element of rigor and and and if they want to form a company, then that element of rigor, those those checkpoints that they're going to have to pass through, will happen in their first 12 months with their investor team as well. There'll be lots of go, no go, that they have to achieve

Speaker 2  49:53  
Absolutely. And, you know, again, important that they understand that. And I was at the. A recent autumn annual meeting in Washington, and a term got coined there in a panel discussion, which I really like, and I use whenever possible now. And that's, you know, in those early discussions about spin outs, you've got to, we've got to weed out the house cats, right? And these house cats, the academics that look through the window and say, Yeah, look, it looks great out there. You know, there's this whole wide world, and I could go out and do this, and I could hunt birds, and I could climb trees and things like that. And then when it actually comes to it, they think, but my food bowl is in here, and it's nice and warm inside the house, and I won't have a sofa to lay on out there, and maybe there's a dog out there or something like going to bark at me. And actually, they like the idea to spit out more than actually, any of the practicalities of being involved in one and running it, they are the ones that are going to be real time syncs for you. So if you can, if you can pull out the house cats, that's a good idea. But there is one more point that I definitely wanted to cover before we completely run out of time on this. And this is how we sort of prefaced it. You know how to discuss commercialization. Well, one of the key aspects of that is telling an academic, actually, we're going to drop your IP right? We don't feel it's got commercial potential or, you know, the IPS, and, you know, once we look at the search report, it's in such bad shape, we don't think we're gonna get anything patentable about it. There's nothing novel, nothing inventive, you know, but breaking that news, as I said right at the beginning, can be quite difficult. Even for us Brits, who are known for our diplomacy, can struggle with kind of, you know, the eminent professor saying, well, but you just don't understand it. That's really, that's your problem. You know, you can't understand is why you're telling me that there's no commercial potential. How do you address that sort

Speaker 3  51:41  
of conversation? Usually, when we've when we've got to that point in the conversation, there's already been, it's been building that direction for a little bit of time. It is really hard. Ultimately, my team will fire that up to me to do because I see that as being, you know, I've got Associate Director, written, assistant director, written in my title, that means that I have to take the rap on all the difficult stuff and and having those conversations. So in in the past two weeks, I've offered IP back to inventors, because we're not going to take it any further. So we've done what we can end of the road our spin out guide. So we have the published guides that our academics will get. It does talk about how we are not, as a university, going to keep your patent filing going forever, and that if it isn't, if it isn't partnered with an industry partner or a licensee, or it's going into a spin out, where the patent costs are going to get covered at a reasonable point after PCT, then it's out because I can't afford to keep covering the budget as it as it goes exponential and and that we have limited money to pay for that. And that's that, generally is the basis of the conversation is that I don't have unlimited resources. We've come to the end of the resource allocation for this. It tends to be that when you then offer the IP back to the inventors, that they then say, Yes, I want it. Yes, I do. I want it. And then two days later they come back say, actually, I don't, because they've they've been to talk to my IP manager, who's pointed out that there's two renewals coming up each of like, three grand each, and actually, then there's another renewal in this territory over here, and they've actually got to pay the transfer fees to get it into their name. It starts building up really fast, and I think that's when they start to really appreciate how much financial support they've had, as well as the resource support,

Speaker 2  53:34  
and how hard it is to find commercial partners. I have a one extreme. I have, I have known an academic who did take the IP back after a spin out, which, let's say, didn't achieve its milestones, and indeed, re mortgaged his house to fund patent because he was so convinced that science was right, and he's still on that path many years later. So that's a very extreme example most of the time, as you say, it just comes back sort of fairly quickly. But I think that sort of conversation has the capacity to get, you know, heated, or leave the academic very disappointed. But I think if you handle it in the way you described, you keep it objective and it evidence based as well. So like we've tried this, we've done all these things. We haven't just let it sit on a shelf for three years and then we've suddenly decided what we do with it. It's like we've put a lot of effort into this list out all the stuff that's happened to it, and just say, you know, we can't think of anywhere else to go with this. Yeah, you know, we're all ears if you can think of something, but we've tried what we can. We've marketed it extensively. Nobody is interested. We've had this feedback on it in the past, or we've struggled with the prosecution for whatever reason, we cannot find a way through for it. You know, I think they accept that, and it's about building your profile as a trusted advisor. Sometimes delivering bad news in the right way will build that up.

Speaker 3  54:53  
I will, I will also frequently have a, have a pre conversation with the Dean of School. Say, this is what this is what's happening. I expect that they won't be happy with that decision, and this is the basis for the decision. So it's not that they're not on their own dealing with that kind of decision.

Speaker 2  55:12  
Yeah, and manage upwards as well. Is an idea. Nobody likes A Surprise Phone Call with an irate academic. So you know, if you are having that type of discussion, I would recommend that you brief your director or your line manager. There might be some incoming from them on the on a decision that they didn't like. But again, if it's if it's honestly based, you know, to your point about not demonstrating bias for one group over another, everybody is assessed by the same criteria, you know, I think that's fair enough. I think we can, we can squeeze in a couple. We've only got five minutes left. I don't know where the last hours gone, actually, but maybe, maybe invite us back. You know, Andrew and Rachel talk tech transfer, next installment, because there's several things we didn't get on to on this. But Elizabeth asked, Do you offer a standard arrangement Express license to faculty startups. And what does that startup deal look like? Okay, so this is, this is something that has happened in my experience. So one of the causes of the time it takes to do a startup is the length of time to negotiate a license, and on standard terms, it is possible to speed that process up, but it's a question as as to whether the, you know, quite often academic founders will accept standard terms. And it's almost like you have to offer them a a route either we can negotiate everything, in which case, you know, we might end up at the same place at the end of it, but it's going to take a lot longer, because there's some things we can't move on. You know, if there's going to be things like, you know, their lawyer is going to argue things like, you know, research rights and, you know, warranties and things like, this is stuff that universities can't move on. So there is no point in discussing that. But if they're going to argue all the commercial terms and things like that, then it will take a while. If they they take the deal, then it can be very fast. I think my record is two days a license negotiation to a startup, because they said, you know, we had a call with them on Friday. They said, We want to found the company on Monday, and the license got be ready. So I said, Sure, please sign here. And I did unamended I just signed the license agreement. That's it. Just filled in the title at the end of it, royalty rate. Everything else was set out in there. So there you go. It can take two days if you want it to, but if you negotiate everything, it'll take a lot longer.

Speaker 3  57:31  
No, I would agree. We have, we have standard templates. We we always start from from the basis of a simple and easy to understand deal. And I think that's, that's where we come from. Frequently, what happens is it hits their lawyers, and depending on on which lawyer they've chosen, they might want to be get all creative about it. We're trying not to be creative really, because it should be fairly explanatory about what what the company is going to do and how much they're going to pay for it. We'll also start with a term sheet that sets out the main financial and deal structure that they can review and sign up to and then start, start forming based on that. But yeah, it's we don't tend to have standard terms as such, and we certainly don't have Express licenses, simply because the basic this, the startup numbers that we deal with are not excessive. I think if they if they start to become unmanageable, then it gives us an opportunity to look at things in different ways. Where I'm currently doing a spin out this week, where we're doing it in a slightly different way, because that's what I'd like to have a go at, and to see if it's possible to do it in a different

Speaker 2  58:39  
way for us. If it's possible, yeah, I think, you know, by by sector, you're going to be within a sort of, you know, guide rails on terms in terms of royalty rates, if that's the route you go down. You know, some universities offer assignment under certain conditions, either for money or for free. Some of them want a royalty bearing license. You know, it depends what you want to your basic strategy. You know, if you want to ensure income for your university at the end of the day, with many startups, it's not actually going to be the startup paying the product royalty, because they're going to sub license it, and their sub licensees going to be actually doing the sales and paying the royalties. So, you know, bear in mind, if the startups arguing, Oh, this looks a bit harsh, actually, it might be somebody completely different, like, you know, shell or Chevron or Pfizer, who are actually making the product at the end of it, and they're much more able to pay the product at the end of it. But

Speaker 3  59:32  
one last comment to make, really, is that if you, if you have an experienced tto that's working on, on the opportunity that's going to form of spin out, then the deal that we're offering them should take into account how that business needs to operate, and that speeds things up. No End trying to have a one size fits all is just a recipe for disaster, because every business is very slightly different in its own particular way.

Speaker 2  59:55  
Indeed it is. And on that bombshell, I think, Don. Has reappeared. So we're at, we're at the witching hour has completed. So I hand back to you, donville. I hope that was useful to the audience.

Speaker 1  1:00:09  
Thank you so much, Andrew. And on behalf of autumn, I would like to thank both you and Rachel for the informative presentation on today. And thank you again to our sponsor, Marshall Gerstein. A recording of this webinar will be available for viewing in the autumn Learning Center within a week of this event and is included in your registration. Please be sure to complete the webinar evaluation will which will open immediately when you sign off the session. And thank you for being a part of today's presentation. Have a great afternoon. Everyone bye, bye, thanks everyone,

Unknown Speaker  1:00:41  
bye, bye.

Transcribed by https://otter.ai