Philip Kim is an expert in cancer-related protein interactions, but he had a lot to learn when it came to commercializing his potentially life-saving research.
The associate professor of computer science and molecular genetics at the University of Toronto first filed an invention disclosure in 2014 based on a lab process related to cancer inhibitors, but ultimately decided not to push for a patent application because he sensed a lack of interest – a decision he now considers a miscalculation.
Two years later, he found himself in the opposite situation.
“We had already published something – a method to predict targets for antibodies – and a company approached me about licensing it. So, basically, we filed an invention disclosure after we had already published, which is not the way it’s supposed to go.”
Kim’s initial missteps aren’t exactly unusual – even at U of T. Put simply: Researchers are busy, focused on their work, and can’t always be expected to know the mechanics of technology transfer.
So, to help educate and improve awareness, U of T’s Innovations & Partnerships Office, or IPO, spent the past year developing two step-by-step guides to commercialization at the university.
The first guide explains how U of T’s technology transfer process works, from the patent process to negotiating license agreements. It also details U of T’s “inventor’s choice” policy, which allows researchers to either commercialize an invention themselves or offer it to the university.
The second guide, meantime, aims to demystify the process of launching a startup company based on intellectual property developed at the university.
Philip Kim, an expert in cancer-related protein interactions, filed an invention disclosure last year related to mirror-image molecules that can help make drugs longer-lasting (photo by Jovana Drinjakovic)
“We were getting a lot of one-off questions from our inventors and the same themes kept coming up,” explains Jennifer Fraser, U of T’s director, innovations.
“We felt there must be a better way to introduce people to what it means to be an inventor at U of T, who we are and how we can help.”
Fraser says the three most common questions the office receives from U of T researchers are when, why and how to file an invention disclosure, with the “when” query causing the most consternation. She adds that many of the 209 invention disclosures her office received last year – three-quarters of which were submitted by teams that include both a faculty member and student, and half of which were submitted by women – pertain to technologies unlikely to be deemed “business-ready.”
To help researchers better gauge timing, the technology transfer guide spells out nine steps of technology readiness, from observing and reporting basic principles in the lab to successfully proving the technology in an operational environment.
Researchers considering making an invention disclosure are also encouraged to reach out to IPO as early as possible for guidance. The office has considerable expertise. Since 2010, U of T has filed more that 400 patent applications and negotiated over 250 license agreements. When it comes to determining which elements of an investigator’s research hold the most commercial promise, or are most suitable for a patent application, having industry perspective is useful.
There may also be opportunities to strategize around timing.
“Let’s say they’re waiting to find out about a grant needed to complete a pilot study, which will provide some great data to support a particular invention,” says Marilee Krinsky, the office’s commercialization manager for life sciences. “We might say: ‘Let’s wait. If you get that data, it’s going to be a much better quality submission.’”
Fraser ultimately hopes the guides build knowledge about commercialization opportunities at U of T and help researchers feel more comfortable about participating in the process.
“I hope it facilitates a more constructive conversation and brings forward new ideas – really just generate more interest,” she says, adding that, in addition to making money for inventors, commercialization can help speed the adoption of new technologies and pay for future research.
As for Kim, he filed his latest invention disclosure – mirror-image molecules that can be used to make drugs longer-lasting and more effective – early last year, and followed it up with a provisional patent application.
He is now working on commercializing the technology with several biotech partners.
With his research increasingly taking on an applied bent, Kim now considers himself something of a commercialization veteran. “I’m very deep into it – I’m talking to companies all the time and I have a sponsored research agreement,” he says.
“The research we do ended up being very useful for a lot of things.”