IP is often the strongest, and sometimes only, asset owned by a university start-up in its early days. Capturing and protecting new IP are essential steps for building a solid foundation on which a start-up can develop their IP portfolio to attract potential investors.
Failing to put in place robust innovation capture procedures can lead to missed opportunities. For instance, it is not unusual for academic research to spawn innovations that are not directly related to the research project’s original aims. Getting your team to think about their research and results through a commercial lens helps them develop a commercial mindset and create an innovation culture.
It is not always obvious what IP a start-up has, might be able to protect and should protect. Consulting your university’s tech transfer office early on is a good starting point. In the meantime there are 6 key questions every university start-up should ask themselves to ensure effective innovation capture.
1. CAN MY IDEA BE PROTECTED BY IP RIGHTS?
A first step would be to identify and understand the nature of your new idea. Is it a technical invention or a brand? Is it a product or a process? This dictates the type of IP right needed to provide suitable protection, which can come in the form of registered IP rights (e.g. patents, trade marks) and unregistered IP rights (e.g. copyright, trade secrets).
2. IS MY IP ALREADY PROTECTED BY THE UNIVERSITY OR MY INDUSTRIAL SPONSOR?
After identifying your IP, you then need to check whether there are any existing IP rights that cover the IP. Check your own records - for example, relevant IP rights may be listed in your research project’s scope or in previous related research projects. Make enquiries with your university’s tech transfer office or your industrial sponsor.
If IP rights are in place or are required, check who is entitled to those rights and whether those rights will cover your start-up’s commercial activities. This should not be overlooked, especially if your team includes an academic employed by the university.
3. IF I NEED IP PROTECTION, WHAT IS THE NEXT STEP?
If the university/sponsor owns your IP, ask them about their IP protection process. If the university/sponsor does not own your IP or is willing to relinquish their rights, you can either take the necessary steps yourself or hire a professional advisor to secure the relevant IP rights.
4. HOW DO I KEEP TRACK OF MY IDEAS AND IP RIGHTS?
Start developing an innovation capture process to record and evaluate your ideas on a regular basis. Creating an IP register and keeping it up to date is a simple place to start. You should do this as early on as possible, which may be during your time in university before you created your start-up. Having the information in your IP register ready will allow you to present to investors at a moment’s notice and show them that you have a thorough approach to IP.
5. WHO SHOULD BE PART OF OUR START-UP'S INNOVATION CAPTURE PROCESS?
Everyone within your start-up should be involved at some level, regardless of whether their day-to-day role is focused on business, marketing or R&D. Having everyone on the same page right from the start will pay dividends in the long run when it comes to quickly identifying new IP and securing IP rights.
Your university’s tech transfer office or a professional advisor can also play an advisory role in the innovation capture process. It is always worth seeking advice early on about developing your own process.
6. NOW THAT AN INNOVATION CAPTURE PROCESS IS IN PLACE WITHIN MY START-UP, IS THERE ANYTHING ELSE TO DO?
As your start-up makes the transition from the academic world to a more commercial environment, many things can change internally and externally. As a result, your innovation capture process needs to be reviewed and refined regularly in order to allow you to adapt and react quickly to new or unexpected changes.
To find out more about how we can help university start-ups develop their own IP blueprint for securing investment, please contact Jason Teng at jason.teng@potterclarkson.com and Sara Holland at sara.holland@potterclarkson.com.
