Strong patent protection is essential for a start-up biotechnology company and can be a valuable company asset. However, it is also expensive, with costs ranging from tens to hundreds of thousands of dollars over time. This session will focus on how to get the most out of your patent dollars. This session presentation is available in audio format here: http://www.marsdd.com/bioent/dec4

1. BioENTRPRENEURSHIP
How Technology Transfer Offices Evaluate IP
December 4, 2006
Tom Corr
Director of Commercialization
IT and Communications
Innovations at University of Toronto
tom.corr@utoronto.ca

2. PERFORMANCE OF RESEARCHERS
Science Watch Study: Bulletin October 11th, 2005*
• Publications*
- U of T published 25,883 papers between
2000 & 2004.
- UBC - 14,819
- McGill - 13,996
Citations
- U of T leads in citations
*http://www.sciencewatch.com/sept-oct2005/sw_sept-oct2005_page1.htm

3. INNOVATIONS AT THE UNIVERSITY OF TORONTO
MaRS Centre
MANDATE: To commercialize the
inventions generated from the $2
million per day that the university
spends on research
RESOURCES:
- 11 Tech Transfer professionals in
LS/PS/IT areas
- Review ~200 DISCLOSURES per year
from researchers and take on ~20 –
this is not an unusual ratio for
universities in Canada

4. Why do some research institutions only
commercialize ~10% of their Disclosures?
• Intellectual Property (IP or Invention) is pure
research with no market potential.
• Market is too small to bother going after.
• Existing patents may not allow for the IP to be
practiced.
• Researchers have unrealistic expectations that
the institution cannot meet.
However, researchers can take ownership of
their IP and commercialize it themselves
should they choose.

5. IP Ownership is a HUGE issue when it
comes to commercialization….
Who owns what…future development
• Researchers are typically obligated to DISCLOSE their research to
the institution with the institution keeping rights for further research
and teaching only.
• Many times disagreements between researchers as to who invented
what, and the % of any proceeds from commercialization that should
go to each– especially difficult to deal with when researchers include
profs and their students.
• Clear ownership is needed before investors will fund.
• Future development of same IP is also a big issue as some
researchers (students) may come and go, which may result in
issues about assigning interest in new but related IP at a future
date.

6. What are a lot of researchers focused on?
• Getting tenure.
• How do they get it:
- Publishing papers
- Doing more research
- Teaching
Commercialization of IP is not always high
on their list – has implications for
businesses and investors who want to
acquire the IP and move it forward in
conjunction with the researchers.

7. Cross Cultural Issues
Investors need to understand:
• IP requires time and investment before ready to
market.
• Likely a requirement to fund on-going
commercially relevant IP research and
development.
• Researchers want freedom of research and
control over their IP.
• Researchers need to publish results.

8. Cross Cultural Issues
Researchers need to understand:
• Focus on marketing and market related issues is
essential.
• Market issues require attention when R&D is underway.
• Significant funds need to be raised and invested to fully
develop products after the initial IP has been created,
and to market the products.
• Companies need to operate at an accelerated time scale
– not on academic time.

9. SUMMARY
The issue of whether to move forward with
the commercialization of IP has as much
to do with the attitude of the researchers,
and whether or not their expectations are
realistic, as does the quality of the IP.

10. QUESTIONS