Considering cashing in on your research? Here's what not to do...

It’s natural when you have discovered something to want to see it developed into new and useful products - either by licensing your intellectual property (IP) to industry or creating a spinout company to develop the product yourself. 

But despite the push by governments around the world to promote technology transfer, many universities still do not have the expertise or resources to exploit the discoveries of their academics effectively. 

It’s a lesson that Geoffrey Goldspink, emeritus professor of anatomy and developmental biology at the Royal Free and University College London Medical School, has learned the hard way. He spent over 30 years researching the development of muscle tissue and cloned a gene that produces mechano growth factor (MGF). MGF promotes muscle growth and could help treat muscular dystrophy or motor neurone disease and repair damage caused by heart attacks. 

Recently, a pharmaceutical company licensed five of Goldspink’s patents on MGF through UCL’s technology transfer company, UCL Business. The university then hired him as a consultant, using the drug company’s money to fund the R&D needed to push the project forward. 

But after just nine months, Goldspink claims, UCL Business terminated his contract, closed his lab and ordered his lab mice to be killed. ’They snuffed out my research group and prevented us from developing this groundbreaking drug,’ he said. 

He is now suing UCL and UCL Business for unlimited damages, claiming they had no right to terminate his contract, and that he is still owed 27 per cent of all income resulting from his MGF patents. The university has said it disputes the claim and intends to contest it ’vigorously’. 

The right formula 

Getting tied up in legal disputes is just one hazard facing the would-be academic entrepreneur. 

Magnus Goodlad is chief operating officer of IP Group, a venture capital firm that specialises in commercialising university IP - particularly from chemistry departments. He says there are several things to consider when commercialising your IP. 

’You have to bring on the right management team at the right time,’ he says. ’An external manager is often needed, because usually you’re working with academic founders whose core skill set is in research, not business.’ 

Having the right business model is also important. Goodlad says they try to build companies around a portfolio of technologies, so there is no single point of failure. 

You also need to have the right route to market. Most early-stage investors can’t support a spinout all the way to market if the development timeline is too long, Goodlad says. In these cases, licensing the IP, or partnering with a larger company to share development costs could be more appropriate. 

’We look to create businesses in sectors where external finance is easy to find,’ he says. ’But we won’t get it right every time.’ 

Oxford Catalysts, a company that IP Group helped spin out of the University of Oxford’s chemistry department, is a good example of how to do it right, according to Goodlad. The company, founded in 2004 by Malcolm Green and Tiancun Xiao of Oxford’s Wolfson Catalysis Centre, develops catalysts to help make cleaner fuels. 

The company works with both traditional fossil fuels and biofuels, so it is not reliant on just one product, and a full time chief financial officer was appointed in October. The strategy seems to be paying off - the firm raised ?4 million of investment last year. 

Brian Owens is news editor of Research Fortnight

Nine pitfalls to avoid when commercialising research 

1. Don’t assume the same approach will work in every situation. You have to decide if either the licensing or spin-out route is most appropriate for developing your invention. 

2. Don’t think you can do it all yourself. Seek business management expertise early on. 

3. Don’t be a one hit wonder. A company shouldn’t be formed on the basis of just a single idea or patent. 

4. Don’t assume your idea will sell itself. Make sure you have a good business model. This is particularly important in chemistry, where venture capitalists may find areas other than biochemistry unattractive. 

5. Don’t move too early. The idea has to be ready to be commercialised. 

6. Use your institution’s knowledge transfer office cautiously. Staff could lack relevant experience. 

7. Be very clear about who owns the IP and what it is worth. In a licensing deal, universities often overvalue IP - leading to protracted negotiations that could sour a deal. With spin-outs, IP is usually retained by the university. 

8. Don’t expect promotion. Universities rarely reward entrepreneurship, so don’t expect success in commercialising your research to translate into career advancement. 

9. Don’t go anywhere. Stay close to your university. It can provide you with access to new research,