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BioEntrepreneurship: How Technology Transfer Offices Evaluate IP

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Strong patent protection is essential for a start-up biotechnology company and can be a valuable company asset. However, it is also expensive, with costs ranging from tens to hundreds of thousands of …

Strong patent protection is essential for a start-up biotechnology company and can be a valuable company asset. However, it is also expensive, with costs ranging from tens to hundreds of thousands of dollars over time. This session will focus on how to get the most out of your patent dollars.

This session presentation is available in audio format here: http://www.marsdd.com/bioent/dec4

Published in: Business, Technology

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  • 1. BioENTRPRENEURSHIP How Technology Transfer Offices Evaluate IP December 4, 2006 Tom Corr Director of Commercialization IT and Communications Innovations at University of Toronto tom.corr@utoronto.ca
  • 2. PERFORMANCE OF RESEARCHERS Science Watch Study: Bulletin October 11th, 2005* • Publications* - U of T published 25,883 papers between 2000 & 2004. - UBC - 14,819 - McGill - 13,996 Citations - U of T leads in citations *http://www.sciencewatch.com/sept-oct2005/sw_sept-oct2005_page1.htm
  • 3. INNOVATIONS AT THE UNIVERSITY OF TORONTO MaRS Centre MANDATE: To commercialize the inventions generated from the $2 million per day that the university spends on research RESOURCES: - 11 Tech Transfer professionals in LS/PS/IT areas - Review ~200 DISCLOSURES per year from researchers and take on ~20 – this is not an unusual ratio for universities in Canada
  • 4. Why do some research institutions only commercialize ~10% of their Disclosures? • Intellectual Property (IP or Invention) is pure research with no market potential. • Market is too small to bother going after. • Existing patents may not allow for the IP to be practiced. • Researchers have unrealistic expectations that the institution cannot meet. However, researchers can take ownership of their IP and commercialize it themselves should they choose.
  • 5. IP Ownership is a HUGE issue when it comes to commercialization…. Who owns what…future development • Researchers are typically obligated to DISCLOSE their research to the institution with the institution keeping rights for further research and teaching only. • Many times disagreements between researchers as to who invented what, and the % of any proceeds from commercialization that should go to each– especially difficult to deal with when researchers include profs and their students. • Clear ownership is needed before investors will fund. • Future development of same IP is also a big issue as some researchers (students) may come and go, which may result in issues about assigning interest in new but related IP at a future date.
  • 6. What are a lot of researchers focused on? • Getting tenure. • How do they get it: - Publishing papers - Doing more research - Teaching Commercialization of IP is not always high on their list – has implications for businesses and investors who want to acquire the IP and move it forward in conjunction with the researchers.
  • 7. Cross Cultural Issues Investors need to understand: • IP requires time and investment before ready to market. • Likely a requirement to fund on-going commercially relevant IP research and development. • Researchers want freedom of research and control over their IP. • Researchers need to publish results.
  • 8. Cross Cultural Issues Researchers need to understand: • Focus on marketing and market related issues is essential. • Market issues require attention when R&D is underway. • Significant funds need to be raised and invested to fully develop products after the initial IP has been created, and to market the products. • Companies need to operate at an accelerated time scale – not on academic time.
  • 9. SUMMARY The issue of whether to move forward with the commercialization of IP has as much to do with the attitude of the researchers, and whether or not their expectations are realistic, as does the quality of the IP.
  • 10. QUESTIONS