The personal touch: how to marry R&D and IP

LSPN Europe delved into the challenges of aligning researchers goals with IP and legal frameworks | Disclosure forms, valuing relationships, incentivising researchers and education.

The task of aligning the goals of researchers with IP law remains a difficult one, as panellists at LSPN Europe explored this week.

During the session, Fully exploiting your innovations: best practice in invention harvesting and managing collaborative IP, held on November 21, the panellists delved into the problem of harmonsing goals between scientific and legal teams.

MaryAnne Armstrong, partner at  BSKB, highlighted that every entity, whether it’s the UK’s  National Health Service (NHS), a university, or a company, can struggle with aligning researchers and the legal team when it comes to IP.

Tas Gohir, senior IP, innovation and commercial research manager at Guys and St Thomas's Trust, said: “Researchers come into their careers, because they want to do research. And I respect that primary objective, and the issue of commercialisation and IP is secondary [to them].”

He further stressed that understanding and respecting this primary objective is crucial before attempting to bring in IP safeguards.

Creating a harmonised relationship

Michael Newton, head of IP at  Mogrify, emphasised the advantages of a legal team working closely with researchers in a smaller setting.

“I think one of the great things about being in small biotech is that I know all the researchers, and I go to their meetings and I’m really close to the science that they're doing,” said Newton.

He underscored the benefits of cultivating personal relationships and the “luxury” of not relying on formal invention disclosure forms due to the knowledge of the research team's activities.

Quite simply, formal disclosure forms establish what the invention is; who the inventors are; who is funding it; and what the anticipated product or market is.

Maria Nichol, head of IP at  Agomab Therapeutics, agreed with this view, saying that she is “not a fan of invention disclosure forms and generally generating these kinds of written records”.

Nichol explained that companies tend to have a lot of “milestone moments”, in which the IP can emerge.

When this happens, legal teams should have “personalised discussions” with every researcher in order to understand their contributions fully.

“Get your invention drafted,and when you have a set of claims, set a meeting with the [research] team,” said Nichol.

Gohir offered another perspective on the much-maligned invention disclosure forms when it comes to initiating a dialogue around IP.

“The benefit is avoiding future disputes and to capture essential information,” he explained. “and you're less likely to make mistakes later down the line”.

But he echoed the importance of understanding each inventor's contribution and funding sources, ensuring transparency from the beginning.

Incentivising researchers

The discussion then delved into how to incentivise researchers to engage with the IP process.

Nichol expressed reservations about monetary rewards or researcher s “because it's not consistent across countries”.

“I think it makes inventorship discussions that much more fraught if there's a monetary bonus or penalty,” she said.

Newton also shared his discomfort with monetary rewards, as “they don’t fit within his company's culture”.

Gohir, however, again provided an alternative view, highlighting the “critical role of incentives” within an academic environment.

He emphasised the necessity of financial rewards within university settings, where academics are often motivated by the potential for commercialisation.

“I think it's a good thing that academics are rewarded for commercialisation activity, because the number of academics in any one institution that come forward with ideas is actually very, very low and we want a lot more,” said Gohir.

He also stressed the importance of ensuring that non-inventors who contributed significantly are also acknowledged and rewarded.

“I do want academics and clinicians to come forward and say, ‘I want to make a lot of money from this IP’. I wish there were more that did that because we need these role models in the academic community,” he added.

Educating researchers

All the panellists agreed that education was the key to cultivating a greater understanding of IP among scientific researchers.

“IP has never been part of many researchers’ careers, and most of them won’t know the basics of IP protection, commercialisation criteria of patentability,” Gohir explained.

Additionally, he recommended that the education and training should be tailored to specific researchers.

“The education for researchers who have the aim of creating a spin-off company would be different to an academic who only wants to licence an invention to an existing company,” he added.

Nichol further emphasised the importance of making IP education “interesting”, by incorporating real-life examples and informal discussions, while Newton shared his experience of providing blanket education sessions and the value of tailoring messages to resonate with researchers' backgrounds and perspectives.

LSPN Europe was held on Tuesday, November 21 at  BMA House in London. LSPN North America Spring 2024 will be held on April 10-11, 2024 in Boston, MA.

To register or for more information click here:  https://www.lspnnorthamerica.com/.

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