Intellectual Property - Medipex

Medipex, the NHS Innovation Hub, will provide leadership on intellectual property (IP) to all parties engaged with the proposed CLAHRC YH project including guidance, agreements and advice on IP strategy, determining IP ownership, rights and its commercial exploitation.  Medipex was a partner on the successful NIHR CLAHRC for South Yorkshire programme, and led the IP strategy for the programme, and provided advice to all partners (NHS and HEI).  

All parties wishing to work in collaboration with the CLAHRC YH programme will be required to enter into a Collaboration Agreement at the outset that sets out individually and collectively the rights and responsibilities of each partner in respect of ownership and exploitation of IP arising out of any agreed work. 

Such an Agreement would provide a general framework within which all the parties would manage collaborations.  However, the Collaboration Agreement would also take into account any specific rights relating to IP ownership and exploitation that NIHR or any other grant-awarding body may impose from time to time and also that the nature of individual collaborations between parties may not always be on the same basis.  For example, an industrial partner may commission a piece of research from the NHS / research partners whereby all the relevant IP is assigned to the industrial partner commissioning the work.  Under such circumstances the relative contribution of the NHS to the IP would be agreed and what benefits flow back to the NHS as a result of the IP assignment.

Where multiple public sector (NHS, HEI) partners are engaged in work likely to generate commercial interest then maximum benefit to the taxpayer can be achieved by the NHS and University organisations that generated the IP agreeing together which of them is best able to exploit it and to grant exclusive rights to do so for an agreed period. Under such circumstances the relative contribution of the NHS to the IP would be agreed and what benefits flow back to the NHS as a result of the IP assignment.

The establishment of a spin out company, under certain circumstances, may be the most appropriate commercialisation route particularly where the IP could generate a significant commercial return but the short term development costs and risks deter industry from getting involved via the normal licensing route.  Under such circumstances, the IP and the expertise of those creating it are used as assets to raise finance in return for an appropriate share of the equity.  Medipex has successfully helped set up nine spin out companies from the NHS, of which several were joint NHS/higher education institutions (HEIs).  This expertise in incubating spin outs is recognised by NHS and HEI partners engaged with the project and will help ensure that should there be any spin out companies the project will be in good hands in order to make the most of the opportunity.

The procedures that Medipex have in place for management of income arising out of commercial exploitation will be utilised for those project members that wish to make use of it.  On behalf of its NHS members, Medipex has managed an IP pipeline of over 70 commercialisation deals and has been responsible for collection and distribution of more than £0.5million of royalty/commercial income. 

Periodically throughout the previous CLAHRC SY programme a number of meetings and briefings were given by Medipex to research teams where there was an expectation that IP might arise e.g. TaCT, Stroke, Diabetes and where research staff asked for specific advice.  The main topics related to issues around copyright, e.g. external research teams approaching CLAHRC to request use of research materials and output, publications at conferences etc.  There was also issues around how to protect potential IP arising from multiple parties engaged in collaborative research without impacting on the research.  Medipex produced a leaflet specifically for the project “Intellectual Property Rights (IPR) Factsheet for CLAHRC SY Researchers” which has been widely distributed and is being updated to reflect the new YH collaboration.  An initial audit across all work packages and clinical themes identified approximately 20% of the 150 commissioned projects with potentially exploitable IP. Medipex will continue to monitor these projects and work with specific project teams to develop IP strategies at appropriate time in the project.