Report on legal aspects of commercialising university research is published

Mark Anderson, Honorary Professor at UCL Faculty of Laws and member of the UCL Institute of Brand and Innovation Law (IBIL), has had a report entitled: Legal Perspectives On: The complexities and considerations when spinning out companies from universities to commercialise research, published as part of the UCI Expert Insights Paper series.

Mark Anderson was commissioned by the University of Cambridge’s University Commercialisation and Innovation Policy Evidence Unit (UCI) to produce the report. This was prompted by an independent review of university spinout companies jointly commissioned in March 2023 by His Majesty’s Treasury and the UK Department for Science, Innovation and Technology with the objective of delivering improved performance from UK university spinout companies. UCI recognised that policy in this area is typically influenced by financial and technology/innovation perspectives, whereas the complex legal complexities surrounding university spinout companies creates a need for far greater input from legal scholars.

Mark is ideally placed to produce this specialist report. He is an intellectual property lawyer and legal scholar with significant experience with all aspects of commercial transactions involving university research, including spinout transactions. He advises numerous universities, including UCL, on such matters. Mark also devises and delivers IBIL’s CPD courses in this field, including the five-day CPD course, Intellectual Property Transactions: Law and Practice, which has run annually at IBIL for many years, and which has received a UCL Provost’s Teaching Award. Mark has written several practitioner textbooks on IP and commercial law subjects, including Technology Transfer (fourth edition, 2020, Bloomsbury). He is the lead author of IP Draughts, an IP blog which has won an American Bar Association award.

Some of the Report’s key conclusions are:

• Universities should be free to set their IP and spinout policies to take account of academic priorities.
• Complaints by some investors about the initial shareholdings taken by UK universities are unpersuasive.
• There is a need for  more investors in early-stage technology companies, to create more competition in the market. Increased tax incentives and revised rules for pension fund trustees may be more effective at increasing spinout formation and growth than intervening on IP policies.
• The recently-published USIT Guide show that universities and investors can work together to streamline spinout deals, without government intervention.
• The most fruitful area of reform would be to standardise the contract terms of government funders, including IP terms. This would save significant costs in negotiating the terms, and would streamline and simplify the negotiation of licences and assignments to spinout companies.
• Universities must allocate sufficient funding to invest in due diligence for potential spinout companies.

Finally, the Report underlines the importance of recognising that universities are different to commercial companies, and these differences are not all “faults” that need correcting. Rather, it is these very differences that enable universities to create the seeds for groundbreaking technologies and innovations. Therefore, the challenge is to find ways to bridge these differences, to allow for the smooth and efficient translation and transition of ideas and knowledge from the academic domain into the commercial world and society more widely.

The UCL Institute of Brand and Innovation will be exploring some of the issues surrounding university research commercialisation at an event taking place during the upcoming academic year. 

Download a copy of the report (pdf)