Event Reports

Patents and Intellectual Property (IP) Rights- an important milestone towards your biotech venture

Leo Chen - Thursday, October 16, 2014

SBN Venture Ready Program kicked off last night with our first workshop - “Contracts and Intellectual Property”, led by Mark Pidkowich from Smart & Biggar / Fetherstonhaugh & Co. Mark initiated insightful discussions on the topics such as patents, freedom to operate and contract negotiations.

In my opinion, Intellectual Property (IP) is not a very well discussed topic in academia. For a graduate students like me, this was an entirely new area to explore and learn more about. This workshop made me realize how important it is to understand the basic concepts of IP. It also encouraged me to review my thesis research projects thoroughly and look at new ideas. The scope of new ideas can be broad - it can be a new method, an improvement to an existing method, or an idea for a new model/technique. You basically have to pay close attention to what you are doing and think outside the box and the traditional realms of academic research. Graduate school usually spans over 5-6 years and it is a great opportunity to dig deep into your projects and look at all associated aspects. If your research question is doing a screen and finding a new target, also look at existing patents and existing research and think hard about how you can fit and contribute something novel in that field. Can your ground breaking research offer something useful and new in the field of your interest?

This workshop also challenged me to think about a fine balance which exists between publishing your research (a must for faculty positions) and meeting the obligations of patentability (your idea or work should not be disclosed to public). Being proactive and asking questions can help you get a good handle on how to deal with these scenarios.

If you want to do academic research without much interest in commercializing your research or thinking about patenting your invention and claiming IP rights, there are no bars to stop you from doing that. However, if you want to collaborate or have existing collaborations with other research institutions, it is important to think about research agreements between these institutions. Even though you may not be interested, the other party may see the commercialization potential in your collaboration. To protect your rights, ask your supervisor and have open communication lines with your university offices to review their policies.

If you want to become a Principal Investigator (PI) with a vision of ultimately commercializing your research, you have to think hard about all the inventors involved. If you publish a paper with 6 authors and later on, you file a patent application with 2 authors, be prepared to clarify the roles and contribution of each author in the project. You should also make sure that you are treating all inventors equally with equal shares. As Mark puts it, “get it right”. This is one of the most important aspects of patent applications, so be fair towards everyone’s contribution. I think this is a very important message for future PI’s with a vision of commercialization of research.

What does this mean for graduate students? As graduate students, you present your work at seminars, national and international conferences, committee meetings. This will count as previous public disclosure (“PRIOR ART”). Confidentiality and non-disclosure of your potential patentable idea is important. Have a conversation with your supervisor regarding this. If you are an inventor of an idea/technique, it is extremely important to not disclose it without securing your grounds.

I have heard several times before that a group of graduate students are interested in starting up a new venture. If you are working in a team of graduate students or researchers, there can be potential conflict down the road over ownership and inventorship. In that case, memorialize and document your conversations (through emails, for example). Have this sorted out from the beginning. If you have an agreement and clearly defined roles up front, you won’t feel cheated later on. It is also important for graduate students to carefully review all the research contracts, agreements, university research policies and assignment clauses. Ask questions so you can establish your ownership and you are vigilant about protecting yourself.

Concluding Remarks: I think researchers, scientists, PI’s and students need to be better educated on this topic so there can be an open communication and the opportunities to grow and innovate are not lost. Yesterday’s workshop was a great educational opportunity for me - IP and patents are an important milestone for starting up biotech ventures. So get yourself exposed to these areas!

Kiran Bhullar October 16th 2014

Disclaimer: The opinions expressed here represent my own and not necessarily reflect the opinion of the organizations involved. This is my personal reflection on my learning experience from this workshop.

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