Academic entrepreneurs' intellectual property strategies should include more than only patents

As the director of the Impact Centre at the University of Toronto, I work with students, postdoctoral fellows and even faculty members who are interested in commercializing their research. Since 2010, over 100 teams – from the fields of optics, material science, chemistry, computer science and others – have participated in the Impact Centre’s entrepreneurship training and mentorship programs. Some have raised money from investors and sell their products, while others never made it past the lab bench and initial business plan.

Although companies ranging from the University of Minnesota’s Medtronic to the University of Toronto’s Connnaught Laboratories have their origin at academic institutions, most academic researchers are not versed in product development, intellectual property, market analysis and other core business practices that are vital to successfully commercializing breakthrough science.

Once an academic group comes up with a viable innovation, it’s vital to protect the researchers' intellectual property (IP) as they move toward commercialization. Of course, patents can play an important part in any company’s IP strategy. However, we’ve found that many government programs, funding agencies and other commercialization support programs focus excessively on obtaining patents. They tend to ignore the fact that any IP strategy must be tailored to the specific technology, company and industry.

OK, you’ve got your big idea.ian munroe, CC BY

Protecting intellectual property

The products that academic entrepreneurs put on the market are the result of years of research and deep technical expertise. Properly protecting their intellectual assets is vitally important to the future of these knowledge-based companies. If a more established competitor – with its financial resources, sales networks and suppliers – is able to easily copy the new products and leapfrog years of research, then the new start-up will find it very challenging to succeed.

A lot to ponder….Thomas Gehrke, CC BY-NC-ND

Fundamentally, an IP strategy allows a technology company to profit from the knowledge, expertise and inventions it has created. One of the most important topics we cover when mentoring teams of researchers is how to protect their IP through practical strategies. The best solution for each group must be based on their own situation and leverage all of the available IP protection tools.

These strategies can be composed of different components, such as:

• trade secrets – where you don’t tell anyone how your product works and hope no one figures it out
• trademarks – where you protect an identifying mark, such as a logo
• patents – where you apply to the Patent Office and disclose your invention in exchange for a 20-year monopoly on the use of your invention. If you are successful and your patent is issued, you have to continue paying the Patent Office maintenance fees to ensure your patent remains valid.

The role that patents play for these early-stage, usually resource-constrained companies is complex. Founders have to carefully weigh the costs and value of any component of an IP strategy. Factors to consider include legal fees, immediate and future payments owed to the Patent Office, time, impact on business strategy, ability to defend against infringement and the normal practices of the particular industry.

Patents are expensive to file and maintain, require a lot of time and human resources, and result in the public disclosure of sensitive information. So filing a patent can have drawbacks that must be assessed as part of the start-up’s overall IP strategy.

This doesn’t have to be your automatic first stop.Kazuhisa OTSUBO, CC BY

Patenting game plan should vary by company

The necessity of a patent differs from case to case and industry to industry. For example, patents play a central role in the IP strategy of one company I’ve mentored that’s developing new chemistry to improve the efficacy of herbicide formulations.

Although the costs of filing and maintaining its patent portfolio are high, they’re a major part of the company’s IP strategy. The pesticide regulatory environment requires significant upfront investment and working with multiple distribution partners to get a product to market. The legal protection provided by patents ensures larger partners or competitors are not able to copy the years of groundbreaking work done by the company’s researchers.

Contrast this with another company working on a coatings technology. Application of the coating can significantly speed up a common diagnostic method used to test for numerous diseases, including HIV. Coatings, unlike drug molecules or new mechanical machines, are very difficult to reverse engineer. This makes them difficult to copy – but it’s also hard to prove when someone else has infringed on your patent.

After carefully weighing the benefits of patent protection against the financial costs, risks of public disclosure and challenge of proving infringement, this company decided to keep their coating formulation a trade secret.

Just one file in the drawer.Files image via www.shutterstock.com

Patents are just part of the IP protection puzzle

Rarely are patents the sole method of IP protection used by companies. But there are individuals and organizations that see patents as the direct measure of potential future success for start-ups.

From our extensive experience working with start-ups, some investors will not speak to you, government organizations will not give you funding and university technology transfer offices will not assist in commercializing your technology if you do not have a patent. This can make commercializing anything you don’t want to patent – either for technical or business reasons – very challenging. It can even dissuade academic entrepreneurs from engaging in commercialization at all.

Patents can be very effective in industries and for technologies that lend themselves easily to patent protection and enforcement. However, we need to move beyond the misplaced idea that patents are the only viable method of IP protection. And they certainly don’t provide a direct measure of the knowledge output and innovation of any company or academic institution.

By encouraging a more nuanced vision of intellectual property along the commercialization pipeline, we can improve the flow of new knowledge and products from our academic institutions to the market. And we’ll all benefit sooner from groundbreaking research.

M. Cynthia Goh is a professor at the University of Toronto and director of the Impact Centre. She has received research funding from the Natural Science and Engineering Council (NSERC), the Ontario Centres of Excellence (OCE), the Ontario Ministry of Research and Innovation, Vive Crop Protection and Axela. The Impact Centre obtains partial funding for its entrepreneurship activities from the Ontario Centres of Excellence.

Scott McAuley works for the Impact Centre and is a student at the University of Toronto. He has previously received funding and support from the Impact Centre, the Ontario Centre's of Excellence and Grand Challenges Canada for his company Lunanos.