KNOWLEDGE TRANSFER PARTNERSHIPS: RISKS AND REWARDS IN R&D

Sara Ludlam, partner in the commercial and intellectual property team at leading independent law firm Brabners, explains how innovation in aerospace could be enhanced through Knowledge Transfer Partnerships and why Intellectual Property concerns needn’t be a barrier.

 

Innovation is at the heart of the aerospace industry, with leading academics and researchers continuing to drive the industry forward in partnership with the private sector. The North West in particular is a cradle for such innovation, with a manufacturing industry worth over £28 billion[1] benefiting from proximity to our world-leading academic institutions, such as the Universities of Manchester, Liverpool and Lancaster, as well as The University of Sheffield’s Advanced Manufacturing Research Centre further afield.

 

An integral part of that innovation is the Knowledge Transfer Partnership (KTP) model. KTPs are part-government-funded relationships that connect businesses with the academic expertise they need to develop, test and commercialise new technologies. But while 12,000 businesses have adopted the model to date, there is opportunity for more to follow suit as the UK continues to be an innovation-led economy in the future.

 

Indeed, in my experience, KTPs are often underutilised by the private sector, with one of the key barriers to their uptake being the perceived complexities of developing and protecting IP in partnership with a research institute.

 

Common IP concerns

From an IP perspective, we always advise that businesses have a robust legal framework in place before working with external partners. As such, it can often be beneficial to engage with legal advisors to gain an understanding of any specific requirements first.

 

Typically, necessary protections include having the right confidentiality agreements in place to ensure that any research that is carried out isn’t published before the business has an opportunity to get IP protection in place. This preparation is key, as the right to publish – and publish promptly – is an important priority for academics.

 

Next, both parties should consider whether the new work will build on existing IP that the business or university already owns. Future IP ownership and management must be taken into account from the get-go, with participants giving thought as to whether licenses will be needed, either to or from the university.

 

To deliver value, any subsequent IP licence should be delivered in perpetuity, and be wide enough both to cover all current and future fields of application while addressing the management of IP registrations and any subsequent litigation.

 

Sharing success

 

Universities often publish their IP ownership policies, so this information is generally available to a business before it decides to embark on a KTP project. However, negotiations around how future revenue generated from any joint venture IP will be shared can be critical for the success of this model. Often, it’s necessary to guide the university on the economic outlook of your industry to achieve the right balance on the return for each party’s investment.

 

Businesses, and the academic institutions they work with, should also be mindful when allocating responsibilities in research projects. A High Court case concluded in February that students should be considered as consumers rather than employees when assessing contractual responsibilities and liabilities.

 

Contracting with consumers is very different to contracting with businesses, meaning that companies should bear consumer regulations in mind when doing so. Accordingly, consideration should be given as to whether compensation agreements with any students involved within a KTP ensure a fair split between the institution and student under consumer law.

 

Entering into a KTP

 

With all this being said, the above considerations shouldn’t deter businesses from entering KTPs. As mentioned previously, most research partners and universities already have template contracts and publicly available positions on IP ownership, which can help ease the process.

 

Additionally, larger businesses – deemed as those with turnovers of more than £36million or 250 employees – can access a KTP funding contribution from the government to cover up to 50% of eligible project costs, while micro, small or medium-sized enterprise (SMEs) may receive a grant contribution up to 67%.

 

Therefore, engaging a specialist IP lawyer to develop a tailored version while providing advice on the risks and how to avoid or mitigate them, is a straightforward yet valuable step to take.

 

Next steps

 

At Brabners, our leading team of IP specialists is well versed in supporting businesses through this process and can set up a watertight framework to safeguard any innovation created further to these arrangements.

 

For more information on the IP considerations you should review before enlisting the expertise of a research partner, or for advice on the legal process, contact Sara.Ludlam@Brabners.com.

 

If you are currently or have previously been involved with a KTP, Sara is keen to hear from you. Insight from the NWAA members forum will be shared to create a knowledge bank of best practice tips across industries.

 

More information on KTPs can be found via www.ktp-uk.org

[1] https://lancashiremanufacturing.co.uk/resources/north-west-continues-to-lead-uk-manufacturing/