Intellectual Property and
Technology Commercialization
Course Number: BIOE 7280
Instructors:
Mike Williams Ph.D. Patent Agent, Ade and Company
Inc.
Darren Fast, Ph.D. President, Solalta Advisors Ltd.
Guest Lecturers
Silvia DeSousa, Thompson Dorfman Sweatman LLP
David Carrick, Aikins MacAulay and Throvaldson LLP
Overview:
This course is designed to provide an introduction
to graduate students on the interaction between the corporate and
academic worlds. Students will be taught how to recognize potentially
valuable inventions and protect them. An overview of the
commercialization process will be provided. Students will have several
reading assignments and a project for both the intellectual property
and technology commercialization sections.
Student Evaluation:
Sessions 1-6 – 3% each session
Students will be required to contribute at least
three relevant statements of less than 100 words in the weekly
discussion rooms.
Session 7 – 32% of final grade
Students will be assigned a patent in their
research area and will be expected to critically review the patent.
That is, determine what is the invention based on the disclosure, what
do the claims protect, what is the most relevant prior art, and how
important does the patent appear to be, based on the number of later
patents that reference it. Students will submit a brief written summary
of this information (2-3 pages).
Sessions 8-12 – 3% each session
Students will be required to contribute at least
three relevant statements of less than 100 words in the weekly
discussion rooms.
Reading Summaries and discussion (15%):
Article references will be provided in advance of
sessions 8-12. Students will be required to prepare a short summary,
with a total length of not more than 400 words, of one article per
session. The summary will outline the main points of the article and
their relevance to technology commercialization. Students will be
required to contribute at least one relevant statement of not more than
100 words per article in the discussion rooms.
Commercialization Project – 20% of final grade
Students will identify a technology in their area
of research and complete the following:
- Target Product Profile with key end-user
features/specifications
- Market Assessment (high level)
- Target market segment definition
- At least two market drivers
- Outline of a project plan for development of
the technology
Grading:
Letter Grade Numerical
Score Explanation Grade Point
A+ 90 –
100 Exceptional 4.5
A 80 –
89 Excellent 4.0
B+ 77 –
79 Very Good 3.5
B 70 –
76 Good 3.0
C+ 67 –
69 Satisfactory 2.5
C 60 –
66 Adequate 2.0
D 50
–59 Marginal
1.0
F Under
50 Fail 0.0
Intellectual Property
Overview of intellectual property
An introduction to intellectual property – what it
is and how you protect it. Patents, designs, trade secrets, trademarks,
copyright and plant breeder’s rights will be introduced and discussed
to point out the advantages and limitations of each form of protection
Detail on patents
A more in-depth look at patents – why we have a
patent system, an overview of what is patentable and the process for
preparing a patent application – what type of material should be
included, the importance of the claims and the importance of support
for fall-back positions.
Patent searches
This class will cover the various types of patent
searches including novelty, validity and freedom to operate searches.
This session will also cover ‘reading' a patent application to
determine the nature and limits of the protection and how different
parts of the patent are read when determining novelty versus
determining freedom to operate.
Reading claims and ownership/inventorship
determinations
An in depth analysis of what is protected by the
claims of a patent and what isn’t. The second part will deal with how
you determine who is an inventor and how you determine who owns an
invention.
Overview of infringement and validity
An in depth analysis of patent infringement and
patent validity with case studies – does this patent infringe the
claims of this one and is this patent valid in view of this earlier
patent?
Protecting non-patentable subject matter
Industrial designs, trade secrets, traditional
copyright protection, plant breeder’s rights. What is and isn’t
infringment. Software-based patents, limits of copyright protection on
software, what is and isn’t copyright infringement with software, other
forms of protection .
Project
Students will be assigned a patent from their area
of research and will prepare a written report on the patent: who are
the inventors, who owns the patent, what other patents they own as
means of determining how important this patent is to the overall patent
portfolio of the company, what the claims protect, and contrasting that
with the detailed description of the patent.
Technology Commercialization
Technology Commercialization Options:
What are the sources of technology and what are
the options for commercialization (sale, license, acquire, new venture
formation, spin-out, etc.)? How should one decide which is the best
for the technology available? The class will explore each of the
options. The class will also start to consider the process for
technology commercialisation and the major factors required for
success. What does the tech transfer office need to successfully
market a technology?
Idea Generation and Preliminary Market and
Technical Assessment
Technologies and products based on the technology
must address market needs to be adopted by end users. This session will
start to build the business case for a new product and will address
various questions including: How is a determination made that a
technology addresses an unmet need? What is the overall market
strength? Is the product differentiated sufficiently to be adopted?
What is the unfair competitive advantage that will allow the product to
capture and defend market share. Students will discuss preparation of
an elevator pitch.
A case study examining market need and product
potential will be discussed in class. Students will be evaluated based
on their contribution to discussion of the case, identification and
evaluation of the opportunities and recommendations for courses of
action.
Target Product Profiles will be discussed as a tool to determine the
market and technical specifications required for a new product.
Product Development
A market need and a technology with potential to
address the need have been identified. What are the next steps?
Development work plan, personnel requirements, proposed expenditures,
investment requirements, and capital plan. Project Management
techniques will be reviewed and a sample project outline developed for
a selected technology.
Sponsored Research and Sources of Capital
Sponsored Research – How to forge a successful
partnership with business without selling your soul:
Businesses and academic researchers often need
each other, but don't know how to effectively interact. This session
will discuss some of the driving factors for both academic and
corporate research and how they can effectively work together without
compromising the ability to publish or obtain research grants.
Sources of Capital and Case Study – New Venture
Startup:
Examination of various sources of capital: grants,
loans, equity (Friends & family, Angels, Partnerships, Venture
Capital) and others. A case study examining the formation of a new
venture to commercialization technology will be discussed in class.
Students will be expected to review the case, evaluate the challenges
facing the new venture, and propose various options to address those
challenges.
Instructor Biographies
David Carrick is the chair of Aikins MacAulay and
Thorvaldson’s Tekno Law Practice Group, which is effectively a full
service intellectual property / information technology boutique. He
assists entrepreneurs in developing, protecting and commercializing
their inventions, other intellectual property, information technology
and biotechnology.
Darren Fast, Ph.D. is the President and founder of
Solalta Advisors, which enables companies and institutions to
effectively commercialize their life science technologies and
products. Prior to Solalta Advisors, Darren was Chief Technology
Officer at Lombard Life Sciences, the general partner of the Western
Life Sciences Venture Fund LP, a Canadian-based Venture Capital fund,
where he identified and evaluated more than 300 early stage
technologies for investment. In addition to assessing and investing in
technology, Darren was intimately involved in packaging companies for
follow-on investment/exit, and in helping lead portfolio company
development and commercialization activities. Prior to Lombard Life
Sciences, Darren was Manager, Product Planning and Development at
Viventia Biotech where he was responsible for the development of
several human therapeutics projects. Darren led the project teams that
moved these products from research into clinical trials. In addition
to teaching Technology Commercialization Management through Extended
Education, Darren has presented numerous seminars on technology
commercialization to a wide range of audiences including the Canadian
Institutes for Health Research. Darren has a Ph.D. in biochemistry
from the University of Alberta and a M.Sc. in chemistry from the
University of Manitoba.
Steven Raber practices civil litigation, primarily
commercial, employment, financial services, insurance, and intellectual
property litigation, including patent, trade-mark, copyright, trade
secrets, and industrial designs, and is a registered trade-mark agent.
Mike Williams’ area of practice is biotechnology
and he has prepared and successfully prosecuted patent applications in
USA, Canada and foreign countries for pharmaceutical compounds,
nutraceuticals, lotions, chemical compositions, medical devices,
diagnostic methods and recombinant DNA patents.
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