4.1 Who participates in commercialising universities’ IP?
Because IP owners have controlling rights over their IP, they must be involved in its commercialisation. Undergraduate students often own IP that they create, but otherwise, IP created within a university is usually partly or fully owned by the university (at least initially). Other initial owners may include R&D collaborators and funders, and any external party who contracted the university to conduct R&D from which the IP arose. As commercialisation proceeds, ownership of the IP often changes.
These people have the best understanding of the IP and play a major role in defining it for IP protection. They may refine the IP with further R&D and assist or participate in other commercialisation activities.
University Technology Transfer Offices (TTOs)
Also known as the Research and Innovation Office, Industry Engagement Office, Commercialisation Office, etc, the TTO is a specialised unit within the university responsible for managing the university’s IP and commercialisation activities, with the assistance of IP creators (the technical experts). Related legal services may be supplied by the TTO, or another university department, or by external providers.
Faculty and school administrators and R&D supervisors
Faculties or schools should be, at least, informed of commercialisation intentions and actions related to any part of their R&D, as these can affect their other activities.
These people manage IP protection under instructions from their clients, the IP owners. NDAs are unnecessary with attorneys due to professional regulations. Also, client legal privilege means that communications between attorneys and clients (IP owners) cannot be used unfavourably for the client in legal proceedings.
Usually, only parties external to the university have the resources required to manufacture, market and distribute products or services based on university IP. Even if they don’t fund commercialisation, these industry partners to the university may become full or part-owners, or licensees of the IP, in exchange for providing other essential resources.
These people or organisations provide funding for commercialisation after essential R&D is complete. They are usually not the same entities as the initial R&D funders. Funding options are explored later in this training.