The IP licensing labyrinth, and how researchers can find their way out

To startup or to license? That is the question for many researchers considering their commercialization strategy.

Last week, CommerceLab hosted a Google Hangout that brought together a panel of experts who could provide some advice and direction to help academics determine the best option for their work. Hosted by consultant Rick Paradis, the Hangout was the second online extension of a live workshop series that was also produced by CommerceLab.

The full recording is below, but we’ve once again captured some of the key highlights and takeaways:

Beware the $10,000 mouse trap: According to Jennifer MacInnis, senior director, applied research and commercialization, and legal counsel at Ryerson University, some researchers work on technology that may lack a viable market. If they manage to ensure someone will buy what they’re selling, it’s more a matter of how much they are willing to put into it. Many startups are founded, she said, because there isn’t an obvious company that would license the intellectual property (IP) involved.

“Startups take a lot of work, time and energy. They take people devoted to bringing the startup forward,” she said. Although finding someone to take the IP can also be difficult, “Once you’ve found your licensee, you’re turning your baby over to boarding school.”

If IP is all you’ve got, prove it: Researchers may worry that they need to build a functioning product or at least a prototype before seeking to license their technology or create a startup, but that’s not always the case, said Tai Nam, a lawyer with Miller Thomson based in Kitchener-Waterloo.

“If you are looking to license (your research) and exit, try to capture the value of IP through a registration, whether it’s patents or industrial designs, to demonstrate to investors that you have captured it in some form that’s registered and transferable,” he said. “If at an early stage you haven’t fleshed out the details and you haven’t done some experimentation to figure out what the problems might be, it might be hard to file a patent that demonstrates you have possession of the invention.”

Want a partner? First, figure out the parameters: Academics may decide instead of merely creating a startup or licensing that they will partner with an established firm to further their IP. Paula Mendonça, technology commercialization officer for Life Sciences at Genesis Group Inc., recommended thinking carefully about what kind of partner you really need. For example, there are some companies that can do everything, but are specialized in working on certain stages of development. Do you need help to build a product, to market it, to sell it, or all three? Also, consider how IP should be managed when multiple researchers are involved.

“In our case, IP is jointly owned between inventors and the university. When there is IP that comes out and we evaluate it and it has commercial potential, it needs to be assigned to Genesis,” she said. “Having one institution managing that IP definitely makes things easier. We then work it out with the individual inventors in the sharing of royalties . . . It looks unprofessional if you’re dealing with a multinational and you have different inventors pitching different things. You want to present a united front.”

photo credit: Lincolnian (Brian) via photopin cc