So You Think You Can Patent?
September 20, 2018

I recently had the pleasure of attending a day-long workshop that answered all the questions I had regarding patents in the biotechnology, specifically biomaterials, field. Industry experts, including patent agents, technology transfer officers, and academic professors were there to communicate with all of the attendees.

Instead of relaying all of the information that each speaker gave to us, I am hoping to communicate the important lessons that each speaker by guiding through the steps to initiate this process.

Let's begin with the innovation. Typically academia follows a discovery-driven innovation strategy where an unmet need is explored and a solution is explored. In some cases the solution is patented to protect its intellectual property. Another possible strategy is to peruse the current patent landscape to identify any gaps. These gaps can be exploited by patenting this gap with a new invention. Another possible path, as highlighted by Dr. Ainslie Little of BlueRock Therapeutics, is a Sponsored Research Agreement (SRA) where industry funds specific research by an academic key opinion leader. Once the innovation has been developed the company who helped to fund the research has rights or options to an arising intellectual property. There are other options that can be used to acquire intellectual property, however the options highlighted above are the most popular.

Although most reader might have an idea of what a patent is, some of you might not know why people chose to patent. Dr. Katherine Bonter of Clementia Pharmaceuticals outlined that patents increase the probability of success for pharmaceuticals to succeed in the market. All of the experts at the workshop also agreed that researchers have a responsibility to patent their inventions to increase the viability of them becoming commercialized.

As an academic, once you have identified the specific invention what you want to file intellectual property for, the next logical step is to talk to your technology transfer office. The workshop included a lesson from Dr. Namrata Barai from The Hospital for Sick Children, who was able to teach us about technology transfer. Just so everyone is on the same level, technology transfer includes transferring scientific findings from one organization to another for further development and commercialization. A recent success story of technology transfer is the story of Emily Whitehead, who received an immunotherapy treatment developed through the collaborative efforts of the University of Pennsylvania, and Novartis and delivered at the Children's Hospital of Pennsylvania. So you may be asking yourself how do technology transfer office achieve these successes? Dr. Barai outline four key elements that technology transfer office hope to achieve for all of their clients.

  1. Identify opportunity
  2. Perform due diligence
  3. Patent protection
  4. Commercialization

The due diligence aspect of the above list was discussed by Dr. Julia Pomoransky of Turnstone Biologics. She helped to build an oncolytic virus company from a research lab into a fully functional biotherapeutic company. One of her lessons for researchers is to ensure that you have the appropriate documentation to support your intellectual property. If you believe that your research may be eligible for patenting, I would encourage you to talk to your technology transfer office regarding how to use the proper wording in your research notes. If your supervisor has been involved in patents before, they also may be a huge help to understand what needs to documented. Dr. Pomoransky also identifed that project and quality management, which are uncommon practices in research labs, is a key ingredient for proper intellectual property protection.

Another important criteria from the list above that will ensure your invention generates value is patent protection. It is imperative that your invention possesses a competitive advantage to other services or goods offered already. To ensure that what you have is unique, novel and non-obvious (key criteria for a patent) a patent search of the literature will be performed. Dr. Patricia Folkins of Bereskin & Parr introduced us to the world of patent searches. As an academic you may be used to a certain use of language in journal articles and textbooks, however prepare to enter a whole new world of patent terminology. I am not going to pretend to understand it, which is why it is imperative to work with technology transfer offices and patent agents to understand this terminology. Dr. Folkins outlined some great tools for researchers to start to get a grasp of what patents exist out there. I believe that by reading more you will become more accustomed to the terminology used (it also helps if you attend workshops like this one to get firsthand knowledge). The following databases vary slightly in what information is shown, however they all work on the sam e principal of being able to look up patents.

One caveat of using these search engines is that once a patent's priority date is set it will become publicized in 18 months. Therefore, if you working on the cutting edge of science it may be useful to check up on patents relating to your discovery every couple of months to see if anything has become published yet.

Now that you have a unique, novel and non-obvious invention in hand and the intellectual property to properly protect it, it's time to get some money for your new venture.

Dr. Little pointed out that due diligence, see above paragraph, is an important step to review and consider for major investments to occur. Dr. Frederic Sweeney from Northern Biologics pointed out that no one person can achieve a successful company, it takes a team with the right skillset to execute it. A good team, as Dr. Sweeney points out, has the following "tool belt" of skills at their disposal:

  • Technology
  • Network
  • Capital
  • Strategic Planning
  • Regulatory

Finally, Dr. Jonathan Yeh from CCRM provided the numbers behind starting a business in the regenerative medicine space. His tips for launching a business are the following:

  • Build a  development plan that pushes toward value inflections
  • Be reasonable with company valuations
  • If you need examples of this, watch Dragon's Den or Shark Tank. I have found that companies commonly overestimate their valuation.
  • Do not be afraid of dilution
  • An important lesson from the Founder's Dilemma (HBR, 2008) is the argument of having a slice of watermelon vs. a whole grape (i.e. being rich vs. being a king)

Dr. Yeh provided the workshop attendees with a step-by-step process on how to calculate a company's valuation, however I am not going to hope to replicate that here. If you are curious about how properly do that I would suggest adding that skillset to your "tool belt" by hiring an MBA graduate.

I hope this helps aspiring entrepreneurs in their quest to start a company!

Before I end, here is some inspiration that was passed onto the attendees during the final panel discussion

"Listen deeply. Hear what's important." Dr. Ainslie Little

"Talk about the awkward things NOW and get in front of the problem." Dr. Frederic Sweeney

"Take more risks." Dr. Jonathan Yeh

"Leadership qualities [are key to a successful business]" Dr. Julia Pomoransky

"Figure out what's important [and focus on that]." Dr. Milica Radisic

"Network is more important than the details" Dr. Michael May

Written by
Nathan Holwell
View all my posts →