a, Science & Technology

Patents: from the McGill lab to the world market

At many universities, like McGill, the seeds of the next great invention could be awaiting discovery—in a student sketchbook, a lab notebook, or on the corner of a professor’s desk. While the allure of invention is strong, the high cost of obtaining a U.S. patent (usually between $20,000-100,000 and sometimes more) often has an inhibiting effect on academic patents.

This may be resolved with a bit of institutional help, according to Associate Director Commercialization Michèle Beaulieu, of the McGill Office of Sponsored Research (OSR). The OSR offers professors at McGill services and support in the realm of intellectual property matters. For example, McGill will cover the cost for inventions that have commercial potential. What’s more, this potential isn’t necessarily restricted to a potential for profit. As evidenced by many McGill inventions, patenting has proved to be instrumental in bringing beneficial and commercially valuable products to market.

“We look at market need. If there is a need that this invention can meet, then yes, it is good enough for us,” said Beaulieu. “Our objective is not to make money, first and foremost; it is to make sure, ultimately, that if a researcher reports an invention to us [and] this invention has potential, that we will try […] to find a way to get this to market so that it will benefit people.”

Dr. Satya Prakash, from the department of biomedical engineering, is one of many McGill professors who have benefited from the intellectual property expertise in the OSR. With a successful company, Micropharma, Prakas has approximately 50 patents to his name.

“They’re very, very supportive,” Prakash said. “We are researchers […] We have no idea how to do these things, they are the first stop.”

However, not every project culminates in a patent. Despite the many resources offered through the OSR, the publications produced at McGill still far outnumber patents. For many professors and students, patenting does not seem to be a priority. However, Prakash thinks it is an integral part of bringing potential products developed by universities to the market.

“Patenting […] in university is very helpful, extremely useful,” Prakash said. “There is no other way [to] bring value to your product. You cannot make it without patenting it, and McGill has a very special program for that through the Office [of Sponsored Research].”

Changes to intellectual property law, currently sweeping the United States, will make patenting even easier. Last month marked the one-year anniversary of President Obama signing the America Invents Act into law. The act, which will take full effect this coming spring, will lead to sweeping and long overdue reforms to U.S. intellectual property law.

This includes a shift from a first-to-invent to a first-to-file system—which will lead to an estimated 22 per cent decrease in the fees required to file for a patent with the United States Patent and Trademark Office­.

The first-to-file system grants a patent to the first inventor to file for a patent. In contrast, the first-to-invent system, seeks to grant patents to the first inventor to conceive an idea. First-to-file is inherently much simpler and cheaper to document.

Regardless of changing international intellectual property laws, the experienced hands at offices like the OSR can make the patenting process and cost manageable. What’s more, these changes are not expected to have much effect on the average McGill inventor attempting to patent their brilliant idea or invention, says Beaulieu.

“The U.S. was the only country that had that requirement, that first-to-invent versus first-to-file. Every[where] else, it is first-to-file. So it has not really changed anything in the way we do business.”

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