Bonaccord advises on improving the commercialisation of university intellectual property

SUMMARY: Edinburgh-based Patricia Barclay of Bonaccord Ecosse Ltd is a leading intellectual property (IP) lawyer working globally with life science and other innovative companies. She shows how to cost-effectively improve industry-academic collaborations with a resulting impact on innovation, wealth creation and commercialisation in a ground-breaking book on the commercial impact of university innovation. She advocates improving academics’ understanding of commercial needs, clearer contracts with more emphasis on record keeping and communication and more transparent dispute resolution procedures.

As university-industry research collaboration increases to generate new funding, Professor Graham Richards has brought together leading experts to create a book that reveals the current state of intellectual property exploitation by universities: ‘University Intellectual Property: a Source of Finance and Impact‘  (published Harriman House July 2012). Professor Richards is a pioneering chemist and as founder of Oxford University’s technology transfer company is very much the father of UK technology transfer. He has worked with spin-out companies since 1988.

Contributors include a senior judge, a patent agent, an economist and an ethicist. Scottish lawyer, Patricia Barclay of Bonaccord Ecosse, was invited to look at the issue from the point of view of a business interested in obtaining knowledge transfer from academia based on her extensive experience of industry-academic collaborations throughout the UK, Europe and the US.

She picks out three inexpensive areas of improvement to boost innovation and commercialisation, to the benefit of all parties involved, and the future prosperity of the country.

1. More sharing of expertise between the universities’ technology transfer offices to support unusual collaborations

Barclay points out that different industry sectors have different risk profiles and flashpoints which impacts on the licensing and contract agreements and notes there is already an increasing tendency for universities to share expertise and calls for more to be done to encourage this.

She also calls for institutions to be more flexible in their handling of non standard situations noting that as academics increasingly move between different jobs and institutions and collaborations between multiple institutions become more common using the same terms that as where all the IP is developed within one institution is simply inappropriate

2. Better handling of complaints from industrial collaborators

University Technology Transfer Offices may foster industry-academic liaison, but have no powers to control the academic or force resolution if there is a dispute. Fear of lack of effective redress may discourage SMEs in particular from engaging with academia. To help prevent that happening Barclay advocates giving investors a due diligence package to help create a more robust industry-academia partnership agreement.  She also recommends using contracts that cover regular review and reporting of scientific and financial records, and set out clear expectations and obligations accepted by the academic, in addition to establishing a transparent dispute resolution clause.

She also advocates adopting the US practice of separating key roles in any spin-out company and cites a case where an individual with multiple roles made it difficult to assign liability, despite clear misappropriation of funds.

Lastly, she advocates dropping internal investigations by various departments in favour of a single complaints procedure to handle all types of complaint transparently to boost investor confidence in academic collaboration.

3. Better business training for budding entrepreneurs

Barclay says that universities would improve the impact of their knowledge transfer by better equipping their students for subsequent work in industry. They generally provide ad hoc training and entrepreneurship clubs that may be interesting, useful and/or enjoyable, but take-up is patchy and they fail to provide a comprehensive grounding in business methods and practices that would allow young scientists to have a more immediate impact in the workplace or to set up their own businesses.

She suggests a variety of routes to provide better training, including using distance learning techniques and webcasts to establishing facilitated self-help groups along the Mastermind or alternative board models popular with businesspeople.

ENDS (background information follows)

For further information, photos or comment, please contact: Patricia Barclay at

About Bonaccord and Patricia Barclay

  • Bonaccord was established in Edinburgh by Patricia Barclay and services clients throughout the UK, Europe and the US.
  • Patricia Barclay studied law at Edinburgh and Oxford Universities.
  • Worked at Pfizer in the UK and US, then General Counsel of Vernalis plc, Ferring Group and Solvay Pharmaceuticals. As such, she has been involved in decision making at the highest level in very different organisations.
  • She has negotiated complex global licensing and cooperation agreements, mergers and acquisitions, fundraising, the management of intellectual property, public affairs and the establishment and development of internal services and departments.
  • She has hands on experience of the pharmaceutical, animal health, medical device, chemical, food science and cosmetics sectors.
  • Patricia is a solicitor in Scotland and in 2010 she became the first Scottish solicitor to be honoured with a fellowship by the American Bar Association.
  • She trained in mediation with the International Institute for Conflict Prevention & Resolution in New York, Pepperdine University of California and Core in Scotland. She is a member of the Association for Conflict Resolution and works to their ethical code. She is a member of the mediation panel of the World Intellectual Property Organisation and of the Scottish Mediation Network.
  • She has served as Chair of the IBA Mediation Techniques Committee for whom she developed a book of practical essays and is currently secretary to the IBA Healthcare and Lifesciences Committee.
  • She is a popular speaker with professional and academic audiences and has presented on various topics around the world.
  • Her interests include the textile arts and raising funds for St Andrew’s Clinics for Children (Scottish Charity 140214) which provides essential healthcare for children in sub Saharan Africa.

Contact: Patricia Barclay
Phone: 441312026527