Overcoming hurdles with insights from Nicoya Lifesciences

Nicoya Lifesciences is a biotech company in Kitchener, Ontario, co-founded by engineer Ryan Denomme in 2012. Nicoya has an impressive portfolio of over 60 patents and is using its intellectual property (IP) to create new diagnostic devices and breakthrough microfluidic technology for scientific researchers. During a panel discussion with the IP Village, Ryan emphasized the importance of safeguarding IP for medical technology businesses and entrepreneurs.

The chicken and egg problem

What comes first, prioritizing IP protection or securing funding? It is crucial to prioritize the protection of IP for medtech companies. However, this may be challenging as companies are also frequently dealing with financial limitations and lengthy product development cycles. So, while IP is needed to secure funding, funding is also necessary to gain and protect IP. As Ryan points out, this "chicken and egg problem " is tricky. On one hand, companies must safeguard their IP while seeking out funding, but on the other hand, they also have to disclose sensitive information about their IP to potential investors, who aren't initially willing to sign non-disclosure agreements (NDAs).

Strategies to overcome the dilemma

To address these issues, Ryan suggests delaying the implementation of NDAs and other cost requirements in initial meetings until the discussion around technology and data progresses. He also advises researching potential investors beforehand, as it may be prudent to have an NDA in place if they have previously worked with a competitor. These informed decisions help prevent third-party interference that could jeopardize the ability to file for IP protection later on. According to Ryan, protecting intellectual property and obtaining funding is an ongoing process that becomes more complex as the company grows and generates new ideas to safeguard. To save time, he recommends implementing a system to prioritize which technologies require IP filings and which do not. Ultimately, a business should work strategically from the start to strike a balance between IP protection and funding. Ryan also suggests drafting filings yourself and having them reviewed by experts to cut down on costs.

Find flexibility in licensing IP and partnerships

When developing medical equipment and technology, it is often necessary to collaborate with other inventors, while also being mindful of IP infringement and subsequent legal action. Ryan acknowledges this and stresses that "licensing [allows] freedom to operate for background IP. " Licensing is critical to let developers understand what background IP rights they need, what the associated costs will be and how it affects the final price of a product. Licensing can sometimes be a more cost-effective option than starting from scratch, since the core background technology already exists. Licensed technology is also a good basis for developers to learn about a new area of technology before investing their own financial and human capital to assess the growth potential.

In the end, knowledge and use of licensed technology can position developers favourably with potential investors and stakeholders, and can further authenticate their operations. Overall, the reality of early stage technology development includes a fair amount of collaborative work. Nonetheless, it is on the entrepreneurs to take proactive measures to protect themselves when working with others.

Manage and track IP while staying agile

As a company grows, it becomes more challenging to track and prioritize incremental improvements and new innovations. Creating an internal sales funnel strategy, may be the way to go, according to Ryan. This strategy is comprised of two practical stages: ideation and decision-making. During ideation, the focus is on brainstorming as many ideas as possible, without limiting yourself to developmental constraints. In the decision-making stage, ask the team for feedback on the viability of the technology, commercial relevance and other technical aspects. Finally, after assessing the pros and cons, decide whether to reject, shelf or move forward with the ideas in a more strategic manner. While managing this internal dialogue, don't forget to keep up with legal deadlines and administrative actions on existing IP rights (e.g. communicating with the IP office, paying maintenance fees, etc.). Ryan suggests using an internal management software to keep track of these items.

Ryan Denomme's insights on the importance of protecting IP have shed light on the challenges faced by start-ups in securing funding while safeguarding their IP. By prioritizing IP protection, establishing mutually beneficial partnerships and crafting an internal structure to manage and track IP, medical technology businesses can ensure their innovations remain protected and flourish in the competitive market.

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