Yet, two key issues emerge from these partnerships.  First, tech entrepreneurs need to be aware of how ownership of emerging IP rights is to be structured, to ensure that clean and transferable title can be acquired.  Second, tech entrepreneurs need to be ready to manage the pressure to release the results or findings in academic journals and circles, since any such publication can negatively impact underlying IP rights, if strategic preparations are not otherwise made beforehand. 

Some academic institutions encourage researchers to build partnerships with industry to nurture academic research with real-world applications.  Meanwhile, the ranking of top academic research institutions, provided by nature, is based on “share”, as a measure of an entity’s contribution to articles in the journals tracked by its index, calculated according to the proportion of its affiliated authors on an article relative to all authors on the article.

In some cases, peer-reviewed publications can reveal new and unique technologies to solve real world problems, which might be the result of years of research effort by experts.  What if one of those experts is a tech entrepreneur who has been curating a key market advantage underlying a unique technology which is protectable with IP rights?  If the tech entrepreneur isn’t extremely careful, an unplanned academic publication or other activity that inadvertently makes critical aspects of the research available to the public, can be damaging to those IP rights if not coordinated carefully with a sound IP protection strategy.

Publication can come in a number of forms that don’t necessarily involve a peer-reviewed journal.  Academic research is usually undertaken by students pursuing a degree, which requires the submission of a thesis laying out in detail the basis for the research, as well as examples and results.  IP professionals would usually see this information as resembling the details disclosed in a patent application to meet the requirement of providing an “enabling” disclosure, meaning one that enables a skilled person in the field to replicate a new technique without undue experimentation.  The student then defends the thesis before a panel of experts, in a session which is usually be open to the public.  Once accepted, the thesis is typically catalogued in an institutional database catalogue, or an online platform to be accessible to others.

So, while the information contained in it might not land in a peer-reviewed journal, the thesis could nonetheless be just as damaging to tech-sponsored research that is otherwise on track for vital IP protection.

Why so damaging?  Generally speaking, most countries require that a patent application be filed before any “enabling” activity (such as cataloged thesis) that makes the invention available to the public anywhere in the world.  (These are usually referred to as “absolute novelty” countries.)  Thanks to several worldwide treaties, an inventor may file a first patent application in a treaty-member country (such as the UK) and have the right to the first filing date in later filed corresponding patent applications in other treaty-member countries for up to one year after the first filing date.  

Thus, the tech entrepreneur considering an academic partnership should immediately seek the advice of a Chartered Patent Attorney beforehand, so that a suitable strategy can be put in place to keep options open to protect IP emerging from the upcoming academic research. 

Considering both key issues, a strategy might include:

1. Reviewing the IP policies at the academic facility to determine how ownership is to be allocated between the tech entrepreneur, the researcher(s), and perhaps the institution;
2. Confirming scheduling of all academic activities which might result in a disclosure of aspects of the research:
   1. Asking for advance notice of any such activities, so that all documents, grant applications, as well as scripts and other display or hand-out materials for in-person appearances, can be vetted well in advance;
   2. Reviewing the security policies of the designated lab facilities to ensure that visitors sign appropriate non-disclosure agreements before visiting; and
   3. Carefully following guidance from the Chartered Patent Attorney early in the process to allow sufficient time for the preparation of the appropriate patent application filing program.