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The Higher Education practice group provides specialist intellectual property advice and support to clients from Higher Education Institutes (HEIs). In particular, the group works closely with Technology Transfer departments within HEIs, as well as with spin-out companies.
The group is headed by Dr Joanna Thurston, one of several attorneys in the group with direct in-house experience in technology transfer. Members of the group have wide and diverse technical backgrounds, reflecting the variety of inventions produced by HEIs and include patent attorneys from our Electronics, Computing & Physics, Advanced Engineering and Life Sciences & Chemistry teams.
We offer a number of services that some of our HEI clients find especially useful. We carry out regular portfolio reviews to identify areas which could be strengthened and where cost savings may be made.
We offer IP surgeries, during which we will provide a preliminary opinion on patentability, based on information provided by the inventor. We also provide courses and lectures on IP which many new entrants to the Technology Transfer profession and inventors find helpful. Most of the members of our Higher Education group regularly lecture on IP at local universities, some holding formal visiting lecturer positions, others adopting more ad hoc roles. As a result, the provision of lectures of this type to both students and staff, has become part our standard service to our university clients.
We advise our clients on obtaining patent, design and trade mark protection and provide advice on freedom to operate, licensing and assignments. We also have experience in due diligence and inventor disputes.
We understand that HEIs face different challenges to other innovators. We appreciate that inventors in the HEI sector may not be driven by the same factors as those in other sectors. For example, the pressure to publish details of an invention is likely to be much greater for those working in a HEI. Additionally, many inventions made within HEIs are at an early stage, but have to be protected before further development to fund the additional work required, whilst also retaining flexibility for licensing.
We have experience in developing appropriate patenting strategies to take these needs into account. We also realise that HEIs may have different budgeting requirements to other clients and we are happy to work closely with those managing the IP portfolio to arrange a billing procedure that meets those requirements.
Several members of the group have on-going involvement with AUTM and with PraxisAuril, respectively the US and UK’s leading representative bodies of technology transfer professionals. Apart from helping to organise and attending PraxisAuril conferences and forums, it is typical for one or more members of the team to be on secondment to a university department at any given time. This provides our attorneys with practical experience of technology transfer, and provides valuable support for the technology transfer office in question.
For further information please contact the group's lead attorney: