Home > Topics > Institutional Policies and Strategies > IP Management Policy: A Donor’s Perspective > Editor's Summary, Implications and Best Practices

The Wellcome Trust (hereafter referred to as “the Trust”) is a major charitable funder of biomedical research in the U.K but also elsewhere in the world. The mission of the Trust is to foster and promote biomedical research with the goal of improving human and animal health. The Trust supports basic science, technology transfer, medicine, humanitarian activities, and the engagement of science with public dialogue. This chapter discusses the ways in which the charitable mission of the Trust influences how it manages its own intellectual property.

The Trust requires institutions that have produced intellectual property using its grants to determine whether or not the public will benefit from the protection of that property. It also requires that all participants in the research and development process (the researcher, the host institution, any licensee(s), and the Trust itself) receive proceeds that are proportional to the amount of money, equipment, knowledge, or labor that they contributed.

The Trust also insists that intellectual property arising from its grant awards be adequately exploited. If the Trust determines that an institution is not adequately protecting, managing, and/or exploiting intellectual property that was developed using its funds, the Trust has the right to take over these activities. Applicants for grant money should be disclosed whether or not their proposed research will use any technology or materials owned by third parties, and what restrictions, if any, that ownership may impose on the later exploitation of intellectual property.

As part of the Trust’s effort to maximize the value of its research for its goals, a number of commonly used terms (summarized in the chapter) have been developed to address potential IP issues. These terms address two broad categories:

1. Keeping the research field open

   (a) A prohibition on enforcing Trust-funded intellectual property against universities/research institutions carrying out non-commercial research
   (b) The grant or reservation of a license for research purposes (which may be sub-licensable) to the Trust or relevant institution(s)

2. Ensuring appropriate management and exploitation of intellectual property to bring about benefits related to public health

   (a) Formation of an IP management group comprised of the researchers, independent experts, and representatives from the Trust to provide opinion and guidance on IP strategy
   (b) Terms to ensure that the results of research that have a potential developing world application are developed for such purpose and made available to the developing world

The chapter goes on to discuss how the Trust handles material transfer agreements, “pipeline” agreements, and licensing arrangements. It also discusses the important role that publications can play in both diffusing research results and managing intellectual property. The chapter ends with case studies that include the development of a typhoid vaccine, malaria drugs, the single nucleotide polymorphisms (SNP) consortium, and the International HapMap Project. The chapter also includes the Wellcome Trust Policy on Intellectual Property and Patenting, which might serve as a model for other donors or as a basis for non-profit organizations engaged in starting up their own technology transfer activities.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Governments may wish to consider implementing laws that broadly define how the management of intellectual property may affect the charitable status of registered non-profit or charitable organizations. Elements of such a policy may include that the research sponsored or conducted by such organizations must be made available for research purposes to others, and that licensing should include considerations on making the inventions benefit developing countries.

For Senior Management (university president, R&D manager, etc)

• Institutions may find it increasingly common that certain research sponsors (such as the Trust) only provide research support if the recipient institutions have systems in place for identifying and managing intellectual property generated under a grant that are in accordance with the sponsors IP policy.
• Such grants will increasingly require a technology transfer office (TTO) to be aware of humanitarian licensing practices and strategies on how to ensure global access. These approaches go beyond regular TTO activities as the objectives will no longer be the maximization of economic returns. It may require revisions in institutional IP policies, different priorities of the TTOs, and expertise that the typical licensing executive may not have from traditional licensing activities.

For Scientists

• The Trust requires that the results of Trust-funded research be published in an appropriate form. Publication may be delayed until IP protection has been obtained. This should be viewed by you as a constructive step since it may increase the global applicability of your research findings.

For Technology Transfer Officers

• When applying for grants from the Trust, it is necessary to disclose whether or not the research will use any protected technology or materials owned by third parties. It will be important that your office allocates time to assist researchers in the preparation of grants to include appropriate IP management statements.
• The Trust commonly allows an exclusive license, or even the assignment of a patent, to a university “spinout” company. The Trust recognizes that exclusive licensing gives investors or developers an advantage over their competitors and therefore encourages them to further invest in and further develop their intellectual property. Notwithstanding this, certain exclusions may be negotiated in exclusive licenses, such as the provision of the technology to achieve humanitarian benefits. The two goals are not mutually exclusive.
• If an institution proposes the transfer of intellectual property to a “spinout” company, it should provide the Trust with the draft shareholders’ agreement and company articles of association. The Trust will then assess whether the terms are appropriate means to achieving public benefit.