The theme for World Intellectual Property Day 2023 is Women and IP: Accelerating Innovation and Creativity.
To highlight the innovative women in our network, we interviewed some of our contacts who are working on innovative solutions that challenge the status quo.
Innovation requires courage, intuition and thinking that extends beyond traditional measures of intelligence. In these interviews we shine a light on the innovation process and creative thinking behind the business solutions.
Dinali de Silva – Principal Licensing and Ventures Manager at Oxford University Innovation Ltd
Oxford University Innovation (OUI) manages the University of Oxford’s technology transfer and consulting activities, supporting researchers, innovation and entrepreneurship.
Dinali de Silva sits within the OUI Licensing & Ventures team, which supports University researchers who wish to commercialise their IP. OUI assists with licensing and spinout formation, and liaises with technology seekers, investors and other external stakeholders, as well as managing the University’s intellectual property portfolio.
As architects of creative solutions, OUI enable the Oxford University community to maximise the global impact of Oxford’s research and expertise, helping commercialise research and bring the ideas to life.
Tell us a bit about your role?
I work as a Licensing and Ventures Manager at OUI which is concerned with commercialising intellectual property that arises from the University of Oxford. We work with academics in all stages of the commercialisation process starting from receiving the initial invention disclosure, conducting prior art searches to assess the novelty of the invention and seeking advice on patentability from a patent attorney. Following this, if we decide to proceed with the technology, we will then work out the best way to protect the technology and begin the process of assigning the intellectual property from the University to OUI for commercialisation. We then work out the best way of commercialising the technology. This could be licensing it to a suitable technology partner with the resources and capability to develop the technology or in the case of a platform technology, the formation of a spinout company.
What is a typical working day for you?
My role is very varied and a typical day varies enormously. I regularly have meetings with academics who have ideas that they are interested in protecting. As well as recording the initial disclosure, I may ask a member of our team to conduct a prior art search and speak to a patent attorney who will help review the invention. I also work with other members of the team to market technologies to potentially interested companies. I am currently working on a number of spinout opportunities so I liaise with founders and investors to review investment corporate documentation as part of this process. I also support a number of translational funding applications which are a core aspect of the business and this typically involves contributing to the intellectual property protection section of the grant application on how OUI proposed to commercialise the outputs of the research.
What are the most challenging aspects of your job?
One of the most challenging aspects is having to deliver bad news to academics, e.g. being unable to proceed with a patent application of e.g. damaging prior art, prior publication or a too small market to make it commercially attractive. Also, informing academics that we are no longer able to continue with a patent application due to the high costs involved and lack of commercial interest. We ideally aim to get a licensee in place by the national phase deadline and we also aim to get commercial interest before proceeding with a priority filing.
What are the most important skills needed for working in innovation driven sectors?
I would say that working in innovation driven sectors, it is very important to have commercial acumen as well as technical skills. As well as having a strong technical background, it is essential to have a strong understanding of the market you are operating in and awareness of your competition.
How common are truly new ideas?
At OUI, we are fortunate to work with so many innovative people from all around the different academic departments in the University so I frequently come across new ideas and new inventions that we seek to protect and commercialise. We file just under 100 new patent applications a year and take between 300-400 new disclosure a year, and complete 100-200 commercial licence deals per year. Last year, we created 15 new companies of which 10 were spinouts. We are the 9th highest British PCT applicant and the highest University PCT applicant in the EU (19th worldwide).
Where does the role of IP sit in the innovation process?
IP is crucial to the innovation process as it could potentially result in financial returns for both the inventor and the host institution. It is always very important to consider the intellectual property position and the most appropriate type of intellectual property protection for your particular invention, whether it be a patent filing, registered design, trademark etc. For example, when considering filing a patent application, it is important to take the costs that will be incurred into account, particularly when the patent enters the National Phase. The timings of a patent filing also need to be considered, for example, once a patent application is filed, it has a finite lifetime so there is a need to progress with commercialising the invention. However, it is also necessary to consider the implications of delaying a patent filing as this could result in a competitor reaching the market first. Most of licences are patent licences although we have licensed software and know-how also. Most of our licensees tend to want exclusivity and although exclusive licences tend to be more lucrative, a non-exclusive licence (licensing the technology to multiple partners) can reduce the risk in terms of getting the technology to market. Furthermore, if you are seeking investment for your idea, many investors want to see a strong IP position.
Do you have any advice for upcoming entrepreneurs and/or those working innovation driven careers?
Whether you are considering an innovation driven career or a potential entrepreneur, one of the most important things is to consider the IP position and if you are considering protecting intellectual property, it is necessary to take the necessary precautions e.g. not publicly disclosing the invention or any technical details before taking the appropriate steps to protect it. It is also important to consider the market that you will be seeking to address and your competition (you always have competition – otherwise you don’t have a market) and the unique advantages that your technology offers over existing products. IP protection can be an expensive process so it is always important to consider the business case first so that you can maximise your chances of getting a return on such an investment.
