Building on Research Innovation A new resource in the Faculty of Science since Spring 2006

Erica M. Besso, Ph.D.Research Innovation Office2 Research Innovation Office in Science

Erica M. Besso, Ph.D.Research Innovation Office3 EMB - background  Ph.D. ’84, Polymer Chemistry, McGill  Positions held since 1984: Research Scientist, DuPont Canada, Kingston Officer, Research Partnerships, NSERC Founder, Brock Research Partnerships, Brock University Director, Research Services, Concordia University Group Leader, Office of Technology Transfer, McGill  Three-year term as Science RIO started Feb 2006

Erica M. Besso, Ph.D.Research Innovation Office4 Technology Transfer (TT)  Broad definition of Tech Transfer includes entire spectrum  Why do it ?  Recognition  Public good / Contribution to health of the community  Encouraged by government, given public funding of research  Capturing new research $$ [POP, I2I, contracts]  Increasing personal income (sometimes)  At McGill, mandate of Office of Technology Transfer (OTT)

Erica M. Besso, Ph.D.Research Innovation Office5 Intellectual Property (IP)  IP is any product of the intellect protectable by law  IP implies ownership guaranteed by law once protected IP can be sold (assigned) or leased (licensed)  What is a patent ? An exclusive monopoly to practice an invention for a limited period of time A patent provides incentive for companies to invest in an invention, so it can become a product Public disclosure prior to filing a patent application precludes protectability

Erica M. Besso, Ph.D.Research Innovation Office6 Publication and Patents MUST THERE BE CONFLICTING PATHS TO SUCCESS ? Publish or Perish (grants) vs Publish and Perish (patents) WIN-WIN APPROACH: File for protection First, then Publish Protection and Publication are not mutually exclusive! If you think you may have an invention residing in your manuscript, consult RIO before submitting the MS to a Journal

Erica M. Besso, Ph.D.Research Innovation Office7

Erica M. Besso, Ph.D.Research Innovation Office8 Technology Innovation Chain – University Identification of intellectual assets Discovery-Invention Commercial Evaluation Assessment of Protectability Decision to Commercialize R & D Grants & Contracts Due diligence Commercialization Licence Alternatives Spin-off Co. Existing Co. Contracts Inventor IP created RIO OTT New Research $$ Opportunities: POP, I2I New Research $$ Opportunities: POP, I2I

Erica M. Besso, Ph.D.Research Innovation Office9 WHAT are the Actions involved in Stage 1 of TT ?  Report of Invention  starts the process [PI, with RIO]  forms downloadable  Assessment / Due diligence [OTT; entails dialogue with PI]  Inventorship, protectability [patent literature search]  Technology strength, freedom to operate  Market / commercial viability  Conclusions form basis of commercialization plan  Agreement re how will proceed & who will lead  Preparing & filing patent application may be the outcome t ~ 90 days (+ 10)

Erica M. Besso, Ph.D.Research Innovation Office10 What does McGill’s Policy on IP say?  Covers both Inventions and Software  Must report to OTT those inventions that you wish to develop for commercial purposes, before public disclosure  Invention is jointly owned at the outset  If OTT leads the commercialization activities, IP rights must be assigned to the university.  Net Revenue sharing [60:40 when OTT leads] detailed in policy When OTT leads, then McGill pays for patent costs and other commercialization expenses. OTT has a budget for patent protection

Erica M. Besso, Ph.D.Research Innovation Office11 RIO objectives – SUMMARY IP - RELATED  Increase the identification and timely disclosure of inventions with commercialization potential  Facilitate and support interaction with OTT  Increase the understanding of topics relating to IP among researchers in the Faculty INTERDISCIPLINARITY  Identify & communicate potential research synergies  Explore and publicize untapped funding sources for multi-disciplinary projects  Encourage joint projects with industrial partners

Erica M. Besso, Ph.D.Research Innovation Office12 Funding Opportunities Enrichment  RIO approach: For the selected opportunities: secure additional info, models, etc. to increase chance of success Identify potential applicants (together with Associate Dean Research) Communicate directly, provide feedback on drafts Contact with funding agency, visits (as appropriate, if needed) Publish funding opportunities + info on RIO web site Current examples:  NSERC Strategic Network Grants Program  MITACS Internship Program

Erica M. Besso, Ph.D.Research Innovation Office13 Thanks for your attention! I look forward to working with you. To contact me: ext Dawson Hall – Room On the RIO web site:  Boosting interdisciplinary research Boosting interdisciplinary research  Realizing commercial potential Realizing commercial potential  Interdisciplinary funding opportunities Interdisciplinary funding opportunities  Facilities and services Facilities and services  Meetings and courses of possible interest Meetings and courses