Queen’s Partnerships and Innovation’s (QPI) patent agents are helping Malcolm Eade’s company, Spectra Plasmonics, build a “defensive moat” around their unique drug detection technology.
At least that’s how Eade characterizes it. The moat in this case is a decidedly metaphorical affair. Its function is to protect their technology, so that they can benefit from it financially, but it won’t keep out potential customers. It’s all part of their intellectual property strategy.
How to develop a strategy that will effectively protect their intellectual property is a key question in the growth and ultimate success of any innovative new company. With its strong expertise in protecting and commercializing intellectual property developed at Queen’s, QPI helps clients inside and outside the university community to develop and implement strategies to protect their intellectual property.
Intellectual property (IP for short) can be many things. Hearing property, it seems tangible; we might imagine the classic “better mousetrap.” And yes, says Stephen Scribner the Director, Intellectual Property for QPI, “It is something that can be bought, sold, traded, and/or licensed. It can be monetized.” But it’s more complex than that. It’s not just an invention or technology itself as the steps taken to protect it. “Intellectual property,” he says, “could be based on one or more of patents, trademarks, copyrights, industrial designs, integrated circuit topologies, plant varieties, and trade secrets.”
The most powerful form of intellectual property is the patent. Recognizing this fact, QPI has its own patent agents, whose main job is to secure patent protection for technologies and processes invented by Queen’s researchers. QPI may also offer select patent services to QPI’s clients, companies closely associated with Queen’s or others with which it has developed relationships over time, often through QPI’s various incubation and acceleration programs. In addition to heading Intellectual Property, Scribner is himself a registered Canadian and U.S. patent agent (and has been since 1998) as is his co-worker, Angela Lyon, who has been working as one since 2007. Both also have strong science backgrounds: Scribner has a degree in electronic technology and a PhD in biology and Lyon, an MSc in chemistry. (Scribner is quick to point out that as patent agents they are not experts on other forms of IP. They can give some basic advice on trademarks and the rest, but always recommend that their clients seek out experts in those fields.)
Securing a patent is a complex process. “It begins,” says Scribner, “with the inventor disclosing their invention to us.” Scribner says they are typically approached “50-60 times a year; 15 of these may proceed to the patent application stage.”
The two criteria they look for when examining an invention are, says Lyon, “novelty and non-obviousness.” Does the invention possess them? If the answer for both is yes, she says, “then we have a pretty good feeling that we could make a case for patentability.” In the case of a Queen’s inventor, QPI signs an Intellectual Property Agreement with the inventor(s) and the university becomes the owner of the invention for the purposes of commercialization, but splits any future revenues, less initial costs, with the inventor(s).
“The most challenging part of our job,” says Lyon, “is writing the claims of the patent application.” That’s a series of declarative sentences that describe the invention protected by the patent in such a way as to prevent anyone who tries to infringe upon the patent from doing so. “The knack here,” says Scribner, “is to cast those claims as widely as possible while not describing anything done prior to the invention” (what is referred to in the patent world as prior art).
“Inventors are very focused on their invention, and their way of doing it,” he says. “It’s our job as patent agents to force the inventor to consider other options. What we try to do is prod the inventor and say, ‘What about this? Could you do it this way or that way?’” That’s what makes for a strong claim and for Scribner and Lyon, this deep engagement and diligence is what sets QPI apart from many other university technology transfer offices that do not have in-house patent agents and must worry about the costs of hiring them externally. Such offices may end up with claims either too broad to gain a patent or, should one be granted, too weak to ward off an infringement.
From creating the claim, QPI’s usual process is to file a U.S. provisional patent application, followed within a year by one or more “formal” patent applications in selected countries (such as Canada and the U.S.), or an international patent application under the Patent Cooperation Treaty (PCT). For the latter, the next key part of the process becomes a question of choosing which jurisdictions to enter for the subsequent national/regional phase (there is no such thing as an international patent valid for all countries, but a PCT application preserves the right to later file the application in any of its 153 member countries/regions). Securing an application (a process known as its prosecution) includes preparing rebuttals if the initial claims are rejected during examination in each country/region. Should it finally be allowed, a process which can take years, a patent is granted that is good for 20 years from the filing date of the initial application.
In addition to preparing solid claims, QPI’s patent team provides inventors or startups with other valuable benefits.
For Spectra Plasmonics, in part it’s the benefit of having, an experienced hand to guide them. “There’s a number of steps involved,” Eade says of the patent process, “with a provisional filing and from there an international one, and then you pick which jurisdictions.” Where to apply and when are all part of a successful IP strategy. “And Steve basically quarterbacks the entire process for us. He’s really on the ball and good to deal with.”
Another is cost. “Getting a patent can be expensive,” says Scribner. “If we’re just talking a straightforward mechanical invention, we could be looking at $3,000-$5,000 to get the application drafted. If it’s more complex, you could easily spend $10,000-$20,000 just getting the first jurisdiction.”
QPI also provides its expert patent services to a small number of companies, those that are already working with Queen’s or QPI, but with IP that may not have originated at Queen’s. For non-Queen’s startups and companies, where the IP has not been assigned to the university, QPI provides patent services as part of its role in the Scaleup Platform Project, led by Invest Ottawa in Eastern Ontario and supported by the Federal Economic Development Agency for Southern Ontario (FedDev Ontario), and the Women Entrepreneurship Strategy (WES) Ecosystem Fund, administered by FedDev Ontario, in support of the Queen’s-led Women Entrepreneurs Can (WE-CAN) Project. Such entrepreneurs or companies that are selected to receive QPI’s patent services are responsible for paying all out-of-pocket costs that QPI incurs in the drafting and filing process. Thanks to QPI’s various programs, Florina Truica, who through her company Cold Plasma has developed a sterilizing technology for medical cannabis, has been able to apply for a patent without incurring all the initial billing expenses associated with drafting and filing that a lawyer or outside patent agent would charge. Truica also praises QPI’s thoroughness. “When investors I was talking to researched my patent publication, they were pleasantly impressed by the quality of the application -- well written with all the data to substantiate the claims. When I said that I used QPI’s services, they said that was why it was such a high-quality application.”
A company need not even be seeking a patent to benefit from the expertise of QPI’s patent agents. Karen Brunet is a regional entrepreneur whose company, Cntrl+, has developed a simple device that can be worn intra-vaginally to help women who suffer from bladder incontinence. Brunet graduated from the Compass North Accelerator program, delivered by L-SPARK as part of QPI’s WE-CAN Project and aimed at supporting women entrepreneurs who are building technology- or science-based companies. Lyon reached out to Brunet who had started seeking her product’s patent before joining the program, offering to help in any way she could. “I even got permission [from QPI] to be on the company’s advisory board.”
“It’s interesting for me,” says Lyon, “because it’s not just patents, it’s also branding and trademark issues, things I don’t always get exposed to.”
Speaking of Lyon, Brunet says, “She’s always one, two, ten steps ahead of me, which is great.” Through her connections, Lyon was able to connect Cntrl+ with an IP expert in Ireland who is helping Brunet secure patents in Europe and the U.K. She was also able to connect her with former Queen’s academic, Dr. Linda McLean. Maclean, an expert in women’s pelvic health currently at the University of Ottawa, now serves as an advisor. And through her, Brunet hopes to have her product tested by female runners in a clinical trial. “It’s really hard to get your foot in the door for any clinical setting like that,” says Brunet, but Lyon’s connections made a difference. “There’s no amount of money that I could pay for what’s she’s helped me do.”
Finally, beyond helping with initial patent filings, QPI may also offer clients continuity. Tecta-PDS is a Kingston-based developer of water monitoring systems using a technology created at Queen’s, patented in 2002, and licensed to Pathogen Detection Systems (PDS), as the company was then known. Over time, PDS went through a variety of changes including its name, and a switch in the responsibilities for managing the company’s Queen’s-affiliated IP away from QPI before returning it to them in 2016. Working with IP managers other than QPI was, says Doug Wilton, the firm’s CEO, “quite an eye-opening experience.” QPI, he says, “is a one-stop shop. Steve knows our files incredibly well and Angela is working on our design patents. They actually track all the annuities for the design patents.” Says Scribner, “Every once in a while, when I bump into Doug, I might say I haven’t heard from you guys. What’s going on – any new products that we can protect or improvements in those current products? We want to continue patent protection as new products emerge. This can be an ongoing relationship when Queen’s technologies and/or researchers are involved.”