The ins and outs of IP ownership and commercialization

The road to technology commercialization can take researchers through dangerous territory – and one of the scariest areas is intellectual property. Research is all about ideas, and working out who owns them and how to share the profits can be more complex than you’d think. Just ask the University of Regina.

The University last year pledged to make sweeping changes to the processes that it used to commercialize technologies, following a series of 26 recommendations in a report by the provincial auditor. These included a review of the structure of the University’s research centres, better education on policies and processes, and a complete review of its commercialization strategies.

The report, which was requested by the University, followed the launch of a lawsuit, in which it sued two companies that it claimed had unjustly claimed exclusive rights to carbon capture technology developed at the institution. The rights were non-exclusive, the lawsuit said. One of the defendants, based in Regina, issued a counterclaim, accusing the University of trying to change the terms of its deal.

A lack of due diligence

Legal spats like these can come back to bite researchers and their institutions unless significant due diligence is applied to research commercialization agreements, warns Tamsin Miley, a BC-based barrister and solicitor who operates her own law firm Miley Law, specializing in intellectual property and research law.

“The whole process is made more difficult if the IP issues are not addressed at the outset,” she says. “It’s very hard to repair IP defects, if you’ve done the innovation without consciously calculating that you might want commercial results to come out of it.”

Acknowledging contributions

One aspect that many commercialization agreements overlook is who contributed to a technology and may claim ownership or revenues from it in the future.

Research is generally a team-based effort, and institutions must understand exactly who contributed to it when creating a commercialization agreement, warns Angus Livingstone, Managing Director of UBC’s University-Industry Liaison Office. “You can be walking into situations where you don’t have certainty of title,” Livingstone says.

Even when researchers think that they’ve covered all their bases, students who worked on a project can often be overlooked. Then, in the future, they may return to stake a claim after a technology makes it to market.

Understanding who worked on a project is only one part of the challenge, explains Miley. Researchers must also understand the affiliations of those on the team. One danger is that a team member’s funding comes from a government department, which could then become a stakeholder in the technology. Involving the government body can slow down the commercialization process, she warns.

Sector-specific considerations

All of this can be a particular problem when the IP is researcher-owned. On the other hand, some institutions operate on an entirely university-owned model, where the university retains ownership of the ideas, says Livingstone. This can speed up the commercialization process, making it easier to navigate the clear title that many commercial partners need to succeed, he suggests.

This can be particularly useful in certain industry sectors, such as computer software, where the market is very fast-moving, and being first to market involves a race.

On the other hand, a university-owned model can be useful in some sectors, such as biotechnology. Whereas software IP can be protected by copyright as much as patents, patenting is everything in biosciences, Livingstone says. Patents can be expensive, costing $15-$20,000 per patent. Researchers will often need a university’s financial assistance.

Publishing before patenting

The need for patent protection can also cause issues with funding and publishing models. ‘Publish or perish’ is a common phrase in academia, and researchers rely on frequent publication to help secure grant money for their projects. But once an invention has been publicly aired, the clock starts ticking on patentability; they must apply for the patent within a year of it coming into the public domain.

The patent application can also be long and arduous, and researchers must ensure that there is no existing prior art which could render their invention unmarketable. This task often requires an entirely different skill set.

Giving away too much

Dr. Michael Owen, Vice President of Research, Innovation and International at the University of Ontario Institute of Technology, offers one final warning: assuming that all of these other hurdles can be overcome, researchers must not give away too much when they license a technology. This includes the right to use it in their own labs.

“Researchers don’t necessarily recognize that they may be giving away all the rights to use the IP,” he says. “They must always retain the rights to use the outcomes of the research for their own research purposes.” This should also include the right to publish the results of the research, he says.

What’s clear is that Canada could do a lot better in its patent activity; the latest World Intellectual Property Organization (WIPO) statistics show the country ranking 12th in patent filing activity for 2012, behind the Netherlands, France, Germany, China, and of course, the USA. This covers patents applied for both inside and outside academic institutions; still, perhaps a little more innovation is needed?
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