Government Looking in the Mirror: How to Do Better in IP Protection and Commercialization

February 12, 2020

By Noel Courage

The Ontario government’s panel on Intellectual Property (IP) has provided its Report to the government1. The Panel was created in Spring 2019 to develop an action plan for developing a provincial IP framework to exploit Ontario’s investments in research and development.  The government also wanted to maximize the role of Ontario’s “innovation intermediaries”, such as university technology transfer offices, in supporting the framework. A broad definition of IP was considered, beyond just patents2. That said, patents were recognized a significant form of IP in terms of their economic value to protect R&D, complexity and costs.

The panel was asked to provide recommendations on:

  1. Emerging IP and commercialization policies in universities and colleges to improve innovation outcomes (commercialization, protecting IP etc.);
  2. How university and college IP can be commercialized to improve the Ontario economy;
  3. How to strengthen relationships that universities and colleges have with start-up and technology sectors to promote generation of commercializable IP.

The mandate was focused on the Ontario government, and did not review federal government activities in Ontario. The panel engaged with many stakeholders in Ontario, and also considered international practices and initiatives. Consultations, such as questionnaires and in-person meetings, were held with university and college technology transfer offices and other provincially funded organizations, such as research institutes and Regional Innovation Centres (RICs).

Some metrics were identified that may indicate room for improvement in protecting and commercializing IP in Ontario.:

  • Canada’s performance in filing PCT international patent applications appears to lag that of leading countries. 
  • There has been a recent increase in university-private sector partnerships, but still room for improvement in moving university developed technologies out to commercial partners. 
  • There is not a high rate of ownership of patents by small-medium enterprises (SMEs).   
  • It appears that potentially a significant portion of IP created in Canada is eventually owned by foreign companies. 

The various consulted groups provided feedback, which is briefly summarized below:

 

University Technology Transfer Offices

These offices flagged issues such as:

  • Lack of a standardized model for IP ownership can be an obstacle to industry engagement;
  • Variable access to IP-related expertise and capacity between institutions, particularly at smaller, rural institutions;
  • Impact of reduced budgets, and limited or unavailable funding for IP protection and commercialization;
  • Potential benefits of increasing IP and commercialization education on campus; and
  • Potential benefits of increasing industry engagement (“industry receptors”).

 

Colleges

There is some overlap in training provided by Universities and Colleges in Canada. Colleges historically tended to focus more on career training and trades, but they also provide complex technical programs and conduct high quality R&D. The IP approach of Colleges differs from Universities in that Colleges generally do not retain IP ownership. Colleges flagged similar issues as universities regarding access to expertise and on campus education. 

 

Provincially-funded Innovation Intermediaries

Other innovation-supporting organizations, such as the provincially-funded Regional Innovation Centres also flagged the issues of access to expertise and on campus education. These intermediaries typically provide resources and support for IP protection and commercialization, but do not focus on generating IP (ie. these organizations generally support the ecosystem and are not patent-holders).

 

Medical and other Research Organizations

These organizations tend to own IP developed in their institutions. However, despite being IP owners, they also flagged issues around IP funding and access to IP expertise.

 

Northern Ontario (rural) Innovation Stakeholders.

Similar issues were flagged, such as access to IP expertise, capacity, education and networks were flagged.

As a result of these consultations, the Panel acknowledged a need for:

  • Clearer mandates prioritizing IP capacity, programming and related expertise. Creating accountability.
  • Increasing IP education.
  • Increasing dedicated IP expertise and capacity.
  • Increasing availability of funding and resources to de-risk further development of early state innovations through proof of concept/prototype development. This would also increase institutional leverage in negotiating with industry partners.
  • Centralizing certain IP resources to support institutions that need it.

The Panel recommended (summarized in brief):

 

IP Literacy/Centralized Resources

  • Develop a web based IP education curriculum;
  • Provide a centralized resource to provide legal and IP expertise and education.

 

Accountability

  • Develop and implement a standardized governance framework for all publicly-funded innovation and entrepreneurship support organizations that have the potential to generate IP.

 

Structure

  • All commercialization entities, such as technology transfer offices, should have a clearly defined and implanted mandate regarding their roles and responsibilities in generating IP.

The Panel concluded that IP from publicly-supported institutions has the potential to facilitate prosperity through a properly governed, resourced and positioned innovation ecosystem.

In my view, the consultations accurately summarized some of the challenges that have been discussed “on the street” in Ontario in the technology commercialization community. Technology transfer offices and other innovation-supporting organizations work hard with the resources at hand, but there is always room for improvement and to evolve best practices. The panel report provides a call to action for the government to improve its IP protection and commercialization. It would be worthwhile for the government to continue to seek out and listen to stakeholders in order to gain a deeper understanding of their issues and to effectively implement improvements. 


1Report: Intellectual Property in Ontario’s Innovation Ecosystem.” Expert Panel on Intellectual Property. February 2020.

2 Contracts, copyright, domain names, geographical indications, industrial designs, trademarks, plant breeders’ rights, and trade secrets were some of the other key categories. 

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Author(s):

Noel Courage Noel Courage
B.Sc. (Biochem.), LL.B.
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