Commercialization conference brings up intellectual property issues

TORONTO – Academics are from Mars, while industries are from Venus. If university ideas are brought to market, who should profit?

“It’s not a marriage made in heaven,” said Lance Laking, president and CEO of BTI Photonic Systems, during a panel discussion on “Winning Partnerships: Leveraging Academic Research for Profit” at Discovery 2006 late Tuesday afternoon.

One seeks truth, while the other seeks profit, making them inherently different beasts. The union can work, he said, but ultimately real customers trump intellectual property. “Venture capitalists are much more interested in development,” he said. “That’s difficult for research scientists to accept.” But Canada could be doing a better job of providing “clearinghouses” for communication between academia and industry, as well as disseminating promising research.

There are a number of barriers, however, to the commercialization of intellectual property (IP). Academics are often isolated from knowledge of real market needs, said Dr. Tom Harris, Dean of the Faculty of Applied Science with Queen’s University. They can underestimate the gap between discovery and commercial applications, and be unaware of the importance of IP protection – leading to conflicts between dissemination of information and protection of IP.

This can lead to “research and desperation,” he said, where the urgency and timeliness required by venture capitalists is not appreciated by university faculty. “We’re not a factory for hire,” he added. While universities are a great place for the generation of ideas, they may not be the best place for the exploitation of those ideas. And often more money is spent on lawyers than on the actual research.

But nowadays, commercialization potential is worldwide and there is a better understanding of the complexities and issues around knowledge transfer, said Harris. Economic development can be accelerated through university technology transfer programs, and a strong university research base feeds the pipeline for commercialization. But there are no quick fixes. “Technology transfer is a recent phenomena,” he said. “Programs require flexibility to experiment and time to mature.”

General Motors, for example, has more than 60 research projects underway with 25 Canadian research institutions. “We take a long-term approach and try to understand our mutual needs,” said David Paterson, vice-president of corporate and environmental affairs with General Motors of Canada Ltd. The company was also involved in developing the first integrated automotive engineering/business degree in Canada, offered at the University of Toronto. It’s hoping to accelerate automotive innovation, commercialization and competitiveness by linking academia with industry – both GM and its suppliers.

But developing this type of relationship is difficult for smaller companies without the resources of a large enterprise like GM. And it’s difficult for students or faculty to foster relationships if they don’t have industry contacts or an understanding of patents.

Venture capitalists, on the other hand, are looking for crystal clarity around who owns the intellectual property, said Brad Limpert, partner and co-chair of the National Technology Industry Group with Gowling Lafleur Henderson LLP. Is the technology patentable? Can a portfolio be built? What are the risks of infringing on third-party patents?

There are also licensing issues with multi-party ownership or collaboration in establishing due diligence criteria, warranties and indemnities, as well as royalties and compensation. Without a contract or the co-owner’s consent, the inventor may not be able to license, enforce IP rights or share profits with co-owners.

One solution is requiring science and engineering undergrads to take a course covering intellectual property, said Limpert, and making patent research part of the curriculum. And more money should be provided to technology transfer offices in universities for patent services and assistance with negotiations. Half the time, commercialization is possible because the researcher has personal contacts in industry. “We should seek to expand that,” he said.

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