Episode 17: How IP is managed in the academic sector

Lisa Desjardins: You're listening to Canadian IP Voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life. I'm Lisa Desjardins and I'm your host. The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.

If you're an academic researcher, you may wonder if intellectual property is even relevant to your activities. Researchers may be of the opinion that dissemination of knowledge is better managed without any strings attached to funding or any avenues of commercialization, a view sometimes driven by the perception that protecting commercial value of intellectual property is incompatible with publishing research. So are the two mutually exclusive?

At McGill University in Montreal, technology transfer is believed to be directly aligned with their public mission, and the Office of Innovation and Partnership works closely with inventors to help them navigate the technology transfer process and connect research outputs with the people and groups who will help them have the greatest impact. I am honoured to be joined by Mark Weber, the director of Innovation and Partnerships at McGill for a discussion on how they approach technology transfer. Mark, you're the director of Innovation and Partnerships at McGill University, where I think you've worked for almost 10 years?

Mark Weber: Almost 10 years.

Lisa: Innovation and partnership is primarily the resource for McGill where you bring researchers and industry partners together for the generation of technology and knowledge. And so today, I thought we would talk about these two different things because the generation of technology versus knowledge may sometimes take parallel or different routes. But before I go into my questions, though, I was going to ask you if you could talk a little bit about yourself and the kind of work you do at McGill.

Mark: Sure. Innovation and Partnerships was created as a unit a couple of years ago. It combined a few groups that already existed but had different reporting structures. We're all under one roof now, and it combines industry partnerships. So that team works on the research agreements with industry sponsors, whether they include government leveraging through research grants, whether they include service agreements. Even some clinical trials come through that group.

We also have the technology transfer team. They work at trying to commercialize the technologies developed by research at McGill, where the researchers are the inventors and wish to commercialize. That comes through our I&P office as well. I would say, when I started, the fairly standard route was to find an existing company and look for a licence. They could be a small or medium enterprise or could be a large company, but in general, it was somebody that already existed. Now that's changed quite a bit. We actually find a lot more licences straight to start-ups out of McGill.

The researchers involved in a project may want to continue on it in an industrial setting. They start a company, and we license the technology to that. In 2020, per the data in the Association of University Technology Managers survey, we spun out 10 companies. So yes, it's really becoming viable option. We still obviously do licences to large companies or small and medium enterprises as well. But spinoffs are definitely a much bigger fraction of the licensing agreements we do.

Then we also have a group that looks at trying to play industry liaison and find matches between industry and researchers or researchers and industry. Could go either way. That may be for research, it may be for service agreements or it may be for technology transfer…maybe a company is looking for a technology to license, and they would want to come to us. The industry liaison group is good at finding the potential partner, either for a technology or for a research agreement.

Lisa: I think if students start at university, they understand the concept of research and so on, but they may not necessarily understand where the value of intellectual property comes into the picture, why that is valuable for the university. I was going to ask you, in what different ways can intellectual property rights be valuable to a university?

Mark: I think one of the things that we find is that intellectual property in some form, for us we deal really in forms that can be protectable, something like a trade secret is not really that utilized at universities, simply because we need to disseminate information. In the industry, when I worked in industry, they were extremely valuable. So we don't really need them at a university setting. But I will just say that we do recognize that they do provide value to industry. But for us, for intellectual property, there's a couple of things that are valuable. I think one of the main ones is it allows you to get into conversations with potential partners.

In a lot of ways, it's a bartering tool. It's a chip at the poker table. It gets you in the game with something that has value to who you're talking to and at least allows you to have a conversation. I can tell you, when I worked in industry, when I would talk to universities and ask them about their intellectual property, whether it was protected, usually through a patent, if they said no, that raised an immediate red flag. One could be that they frankly don't understand what intellectual properties is and are literally giving it away to many other people. It may mean that they don't really have a clean chain of title and aren't really sure what happened to it. Or the fact that it's already out in the public domain, I really don't have any chance to get something that maybe I can use exclusively. So having that piece of intellectual property does allow you to have that conversation with industry. I also think it's helpful for when, as I said, we're doing a lot more spinoffs. That's a great launching point for a lot of the students to say, "Okay, I was the one who did the research. I now see that it's novel, it's non-obvious, it has utility. I want to do something with it." So they start also to think of what they can do with it.

And I think it also helps the professor to maybe pivot their research a little bit, to say, "Instead of just giving this away, maybe I'll look at protecting, and then I'll publish." I think that education around intellectual property, first and foremost, we need to do a better job of it and utilizing resources like are available at CIPO and working together with experts to show people that intellectual property does have value, and it isn't mutually exclusive from also doing other things with that knowledge you're gaining. You can do it in a protected way but also in a way that it is allowed to be disseminated and published.

Lisa: That's a great way to explain it. I think a lot of people don't know necessarily that the policy is different depending on what university you are going to. You mentioned the importance of educating people. I know you've written guidelines for the people that are at McGill. Could you explain what is the default decision on IP at McGill?

Mark: Our policy is a joint intellectual property policy, so the inventors have rights and the institution has rights. When we go to commercialize, you really need to pick one entity to lead that commercialization. So the rights need to go in one direction or the other. But we do allow both, so that does give some flexibility. If there are researchers who would like to really take it on their own and develop it independently of the university, we do allow that. The other way to go is that the intellectual property would be assigned to the university, and then we would manage the commercialization pathway.

That doesn't preclude the inventors from maybe spinning out a company and then taking a licence from the university. That's a very common way to do it. But our policy, our standard, is joint but that you would hopefully look to assign the invention to the university for us to lead commercialization. There's a couple of reasons why I think that makes a lot of sense. One is the chain of title becomes quite clear. The university owns it, then we license it. And that's through an agreement that's very easy to follow. The other route, where we let the inventor commercialize, we transfer over but don't really know what happens after that. We don't really know what happens to them. If we get asked, we're really out of the picture at that point.

Our normal is that, I hope, that it would go through us. If we do a research agreement with McGill, the standard template is that the sponsor would be able to take a licence from McGill. So McGill would own any forward intellectual property or intellectual property developed during that research agreement, and then we would negotiate an option or a licence with the sponsor.

Of course, that is not always the case. It depends on what the sponsor wants, and as you said, it's different in Canada than in the United States, where it's really a very fixed way to do it. Every institution operates in an identical manner. In Canada, it's really more dependent on what works for your ecosystem. I will say because McGill has a very large faculty of medicine, many of those inventions are very, very hard to commercialize on your own. They simply take too much time and too many resources and dollars to get all the way to an endpoint. And that often requires a technology transfer office and the university to help, to be involved, to bring that forward to commercialization. I think that's another reason why our policy fits McGill. Simply because we do have things that maybe are more quick to commercialize, but we also have many things in the life science space that are going to take a long time, lots of resources, and going through a commercialization process with the university is probably a little bit simpler.

Lisa: If we talk about medicine, I know a lot of people will enter certain disciplines of science because they want to contribute to the knowledge in a particular discipline. There can be misconceptions from a researcher that there is a publish or a perish model, which I know that you know isn't true. And so I was wondering if you could talk a little bit about the common misconceptions that researchers have when they are in touch with your office.

Mark: We see a number of them. One of the very first ones is to work with our office, you need to report the invention. We actually need to know what it is, so we can do some due diligence, make sure it's more than just an idea. We can also check to make sure that maybe it hasn't been done before, at least from our searches, to the best of our ability, rather than something I can Google and find instantly. So we often find people report an invention and think, "Oh, that's the same as a patent, so I can do anything I want freely now because I'm protected." We have to say, "No, that's the starting point to maybe move along the pathway to a patent." That's the first misconception that we've had to deal with, and we try to get that across in our guidelines, that this is the process, the starting point, but after that, we then determine whether it's something that has patentability. When we go down that pathway, we really are looking for something that fits the criteria for patentability. One of the key pieces, of course, is has it been disclosed? We try to ensure we've got a full picture of if it's been disclosed before, so has it been in a publication, a presentation, a poster session? All of those things count.

Certainly, in the past, it wasn't always thought instantly by a professor, "Oh yes, you're right. I went to a conference last year, and I did present this." So we do have to dig a little bit on that. Sometimes we do find out unfortunately that maybe it's past the grace period, and we can't really do a lot with it. But if we can, we try to educate them. "Okay, you've gotten to us early enough. What are your publication plans?" Because often, the publication serves great purposes. If you're like, "We've got a manuscript ready. We're going to send it in, and we hope to get some feedback. And then we'll make the corrections and hopefully be published, "we often say," "Perfect." We'll take that manuscript. We'll send it to our patent agents that we work with, and they'll start to craft a provisional patent application. We'll make sure we get the deadlines right, before your manuscript is actually online," and we have to remind them that it's not just when it appears in print, it's when it's online, it could even be the galley proofs that end up online, "so that we've got to the patent office hopefully before that point to just give us as many options as possible if we go forward with that intellectual property."

Usually, that's quite reassuring to them. First off, there's no duplication of work because they already have the manuscript anyway. It goes to the patent agent to get crafted into, ultimately, a suite of claims. They then publish, and that publication is often a great way to draw attention to what they're doing. Then that might attract industry sponsor or a partner and may also attract an investor, who says, "I see you're doing this work. Tell me more about it." So it can work really well. The other thing we do have to check, aside from the publication is, is it unencumbered?

Sometimes professors forget that, "Wait a sec, that was sponsored." It seemed like the sponsor didn't want to do anything with it. Well maybe their rights in the agreement were that it did belong to them. So that's another piece that we try to make sure is done early enough just so that there's no unwelcome surprises as we try to move along the commercialization pathway.

Lisa: So, when done in a sequence, when you explain the sequence, they understand that it is not necessarily publish or perish. They can be involved in you and continue what they're doing.

Mark: Absolutely. And certainly, I think once they know that, then we start to get them coming to our office earlier, which is great. Often, the first time they come to us, it may be a little late, but then they learn from that. Maybe we were only able to get some ultimate patentability in United States or Canada. But in the future, they may come a little earlier and now we have more options to us. So yes, often it's a learning process. But I think just letting them know that we do not stand in the way of publication and we actually quite encourage it. That fits our mission, and it also serves us well, potentially, from a commercialization point of view too.

Lisa: I think it's easier to understand when you lead out in a sequence like that, but there are still people that are of the opinion, or have signed up to some framework, that their contribution remains, and will be placed, in the open domain. It should be there and that's where it belongs. I was wondering if you have any comments about open science, this kind of movement, and the dissemination of knowledge, if it can coexist with commercialization at a big university.

Mark: I think it can. Certainly, open science is a movement we see at McGill. In some instances, I think there's a lot of value to it. It really can get more data, more knowledge out there for solving some pretty big problems. Certainly, issues around open data make a lot of sense too when experiments simply can't be replicated because maybe the first data set wasn't especially good. Certainly, we see the push for that making a lot of sense so that people can go back and say, "Yes, those data are real. We can use them for our own research purposes."

We certainly don't want to stand in the way of that, but there are other applications where having a patent is really the only way to ensure it's going to get out into the public domain. Ultimately, at the end of the day, we're trying to get great ideas out into the public domain, but we recognize that's not always done by literally making it available. Sometimes you have to find a partner to do it. If it's commercial partner, which is often the pathway to get there, they will want the ability to have some exclusivity in order to justify the expenditure that's going to go into commercialization.

I've talked to a number of other offices around Canada and the world. We certainly do understand the need to be open but also the fact that what we do is often really just the starting point. That we're in a marathon, and we maybe have just run 100 metres. This is just the start. Someone's going to have to take it the rest of the way. They bring a different skill set around a market, around sales channels, packaging, all these things that we just don't think about at university because that's not really what we do. Somebody's going to have to take all that on. In order to justify the expense and resources in doing that, they do want the ability to have exclusivity for a fixed period of time, which is what the patent brings them. So I think you have to recognize both exist, but I think they can coexist. But I certainly don't choose to say that there's only one way to do it. We hope to just have that discussion. Again, we're very happy when people publish after we get to the patent office, if that's the best way to bring that technology to market.

Lisa: Thanks. Very, very interesting. I know that you're dealing with so many different inventors and researchers, and you're also running a big office to take care of all these innovations. What would you say to a researcher who has just realized, "Actually, maybe I've invented something"? What's your piece of advice to someone who's a researcher trying to understand what to do next?

Mark: I love having those conversations. Those eureka moments, where you're like, "Wait a sec. I think you really have something." Hopefully, as I said, the timing has been done properly and that we get a chance to maybe really give it a good shot at commercialization with perhaps some protection if that's what makes sense for that technology. The first thing I usually do when I hear that is, "Okay, let's see what you could do with it. What would a year from now look like with that starting point? How do we flesh that out?" Often it's, "I've found it on one experiment," or, "I can make this work, but I make a microgram."

What does the market need? Okay, you're going to have to make tons of this stuff. Can you get there? So I really like crafting a plan and especially if you're doing this and you've gone to the patent office, you've maybe filed a provisional patent application, which is our normal route. You've got a year. So what can I do to really make that year pay off and show that this has a lot of potential? That's what we try to do, is let's craft the plan and how can we show that we're going to be able to, maybe first off, to me, make sure the science is robust and stands up. It wasn't something that was on the head of a pin, you know, it only works on Tuesdays if  you stand on your head with a certain type of weather outside.  "No, this is reproducible. I can do it every time, but maybe I need to scale. Maybe I need to build an actual prototype that I could test." That is how we are going to do that. I find if you can get the researcher involved in that, and often it's grad students especially, who are like, "This is ideal. I really want to do this. I see the potential." That's where you really take it to something that gets exciting.

I can point to a couple of ours I was involved with very early with them. That first year, where we realized we had something, the enthusiasm around proving out some of the ability to become commercial, to take something that really was a publication at that point but work to something that's now scalable. It was just getting that enthusiasm around answering a couple of questions. To me, it's turning a science problem into an engineering problem.

I'm an engineer, so maybe I'm slightly biased. Engineers want to make things go faster. They want to make more of it. If you can get it to that, you're fine. If it's a science problem where, as I said, it only works sometimes. It will never scale. The reaction rate is so low, I can never convert enough of this to make a product, that's a different situation. But if we can overcome that and turn it into, "Oh! I just need to crank up the production rate, but it's a feasible solution to that," that's great. We get to that, that's where we need to be to then transfer it to someone who's going to take it the rest of the way.

Lisa: Very interesting. Great. Thank you, Mark. It's been wonderful to talk to you. I know that you've written a really great guide for the people that are at McGill. Thanks for sharing the knowledge and your expertise and for being part of our journey to help Canadians understand how to use IP more effectively.

Mark: I think it's certainly something that I'm passionate about. I think we all are in the community at the end of the day, so I want to see great ideas get in the public domain, and especially to the benefit of Canada  and whatever local province we happen to be in. And I think we're starting to see that. We just need to keep trying to educate people, build up the ecosystem, get more talent working on taking technologies to market. If products fail, the next one may fit, and everyone's going to learn. So to me, that's a big part of what we're doing. It fits our mission, which is to just disseminate knowledge and to grow talent, and I think we can do that through innovation and entrepreneurship as well.

Lisa: You're listening to Canadian IP Voices, where we talk intellectual property. In this episode, Mark Weber, the director of Innovation and Partnerships at McGill University explained some of the misperceptions and mistakes around commercialization of academic research. Mark explained that protecting intellectual property in research is often an enabler of conversations with industry and can provide a launching point for students and researchers. The Innovation and Partnerships office works with researchers to create a plan that enables the protection of IP along with publications and, often, continued research.