Case Study – Licensing


Case study 1 - licensing of software
Dr Trevor Bryant, Director of Information and Computing at the School of Medicine came to the CEI when he was approached by an American diagnostics company wanting to adapt software he'd

'Before I had contact with Sue Sundstrom in the CEI, my narrow view was that Enterprise within the University was about Spin-outs, however as I found out this was not the case.' 'Several years ago I wrote some software (PIB) to assist identification of unknown bacterial isolates. Following an approach from a microbiologist working in Tasmania I updated this, as part of a collaborative project, to run under Windows (PIBWin). On completion of the project I made the software freely available via my personal page on the School web site. Last summer I was approached by an American diagnostics company who sell microbiological and other media. They asked if they could have access to the source code because they liked the software but wanted to customise it for their own project.' 'I established what they wanted and how they would exploit it. I then contacted Sue and asked if the CEI could help. From this stage onwards, the CEI handled the negotiation on my behalf and kept me informed at all times. Our first task was to set a value for the code and reach agreement with the company over the price and terms for payment. Initially, they wanted to make a small payment and followed by royalties on units sold. This placed the risk with Southampton rather than them. The CEI suggested and obtained agreement for a fixed price solution over a defined time period. A contract was negotiated between the CEI and the diagnostics media company and I were asked to comment on some aspects of it; finally agreement was reached. The company has access to the software code and my intellectual property is both recognised and protected.' 'Having the CEI handle the negotiations and act as a buffer between myself and the client was very valuable. It enabled me to maintain a good relationship with the client whilst financial terms were agreed.'

Case study 2 - licensing of GeoChirp 3D
The process involved with licensing technology is well illustrated by the example of GeoAcoustics Limited and the GeoChirp 3D profiler. The GeoChirp is an underwater sub-bottom profiler – the first of its kind to offer a 3D imaging resolution. It was produced by a team of scientists led by Professor Jon Bull at the National Oceanography Centre working in tandem with technical experts at GeoAcoustics, a UK company specialising in oceanographic instrumentation. The academic team developed the GeoChirp for several years under an EPSRC/MOD joint grant scheme. The initial idea and design of the system came from the University academics, but the company was involved at a relatively early stage as they had the expertise to translate the initial designs into a market prototype. A joint development team therefore took the research forward to the point at which a robust initial prototype was successfully sea trialled. Following the sea trial, the parties agreed that the best route forward was for GeoAcoustics to further refine the system and produce a market ready design. This led to a practical split with the academic

In a nice twist. . The post-doc has subsequently been offered employment with GeoAcoustics and is now a technical adviser working out of his home town in Germany and providing technical support to the sales team as they market the system to potential users. Whilst theR&IStook the lead on making sure the correct initial research contracts were in place the CEI focussed on negotiating the subsequent IP exploitation licence agreement with the company. in arranging publicity for the agreement and in monitoring future sales and arranging for the payment of royalties and their disbursement to the academics and school. the CEI was also able to arrange for a post-doctoral researcher from the original team to apply for a new RAIS grant to enable them to work with the company on fine-tuning the system ready for focussed on the scientific development and research potential of the system with the licensee taking forward the commercial development. The researchers sought help from an early stage and so the CEI andR&ISwere involved from the initial research collaboration through to setting up the collaboration and licence agreement in 2004.

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