Who owns your research?

Since 1992, Queen’s faculty have had ownership of their own inventions, but they can choose to commercialize their work through the University

If commercializtion is pursued through PARTEQ, they transfer patent ownership to the University, says Carol Miernicki Steeg.
If commercializtion is pursued through PARTEQ, they transfer patent ownership to the University, says Carol Miernicki Steeg.
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A few years ago, Stephen Brown had an idea. After seven people died and hundreds fell ill from drinking water contaminated with E.coli bacteria in Walkerton, ON, Brown and his co-researchers came up with a plan to make the new bacteria-detection systems they had been working on available to the public.

Their self-contained system allows laboratory-quality water tests to be conducted on-site without specially trained personnel. It also runs up to 80 per cent faster than traditional testing methods.

Brown said the product came out of a research project that received funding from Hall Coastal Engineering, Queen’s University Biological Instrumentation and Technology, Transformix Engineering and Thompson Rosemount Group.

“As we started to go, that group fairly quickly realized that this was going to be commercialized,” he said. “There wasn’t a company in the group that was ready to do that by themselves. We talked to a few other larger companies that might have been able to do it, but in the end decided to start our own company.”

In 2003, Brown, his co-workers and their investors founded Pathogen Detect Systems. Brown said launching the company required seeking further outside investment.

“We got some initial investment from a venture capital company to put that together, as well as a bunch of local investors from the Kingston area,” he said.

Brown said they got help from PARTEQ Innovations, Queen’s not-for-profit technology transfer office. PARTEQ helped them get the patents they needed and licensed the patents to the new company.

According to its website, Queen’s founded PARTEQ in 1987 to help researchers commercialize intellectual property coming out of their university-based research. PARTEQ offers researchers the financial support and expertise to market their product and returns the proceeds to the researchers and the University.

Carol Miernicki Steeg, PARTEQ’s vice-president of intellectual property, said that in 1992, Queen’s changed from a policy where the University primarily owned research to one where faculty own their research.

Steeg said this was done to have a consistent policy on intellectual property across the board.

“Senate wanted to have a unified policy regardless of the type of [intellectual property], whether manuscripts, inventions, designs or whatever,” she said. “Before 1992, the University used to own it outright, so there was a 180-degree turn.”

Faculty ownership of research means the University doesn’t push commercialization, Steeg said.

“If the professor decides that he or she wants to publish and not pursue commercialization in any way, of course they’re free to do that,” she said. “Academic scholarship is one of the key parts of any university, and publishing is their choice.”

Researchers can also commercialize their research without going through PARTEQ if they want, Steeg said.

“Under the Faculty Collective Bargaining Agreement, a faculty member may patent or commercialize on his or her own, without using PARTEQ,” she said. “If this is his or her choice, he must notify the [Vice-Principal] (Research) that commercialization will be undertaken. After $500,000 in proceeds, the researcher must return 25 per cent to Queen’s.”

Steeg said researchers who pursue commercialization through PARTEQ transfer patent ownership to the University, avoiding the confusion of multiple owners.

“If we do it for the professor, then we transfer ownership to Queen’s, because there might be five owners,” she said. “When we bundle ownership for Queen’s, that’s because if we’re negotiating with an outside party—whether that’s an investor or a company that’s going to develop the technology or a licensee—they want to know that they’re dealing with one negotiator representing one entity.

“Any profits are split 50-50 between PARTEQ and all inventors.” PARTEQ’s experience with the patents and commercial investment allows professors to focus on their research rather than trying to clear regulatory hurdles, she said.

Steeg said PARTEQ’s share of the revenue goes to the University at the end of the year.

In 2006, with a donation of $500,000 from Queen’s alumnus Tom Kinnear, the School of Business launched the Queen’s Tricolour Venture Fund in collaboration with PARTEQ.

The fund allows commerce and MBA students to investigate funding proposals, negotiate deals and recommend candidates for funding to the fund’s investment committee.

In 2006, Pathogen Detection Systems received $100,000 as the fund’s first investee.

Brown said the company’s product is showing promise, but it’s still going through the testing stage.

“The company now has put together a prototype, and we’ve just got it certified by an international body called [the Association of Analytical Communities] who certify bacteria-measurement technologies, and we’re in the process of getting it approved for use in Ontario,” he said. “It’s not official yet, but we hope that will come pretty soon.”

Brown said there are still many hurdles to clear.

“Now there’s a process where there’s a formal application to have our method listed in a list of methods [the Ministry of the Environment approves], and that’s working its way through,” he said. “Later on, for routine use in actual water plants and things like that, there’ll be some further changes to the operating and regulatory documents that govern how water treatment plants and water operators function.”

Brown said converting research to commercial technology is a long and difficult task.

“One of the challenging things with any start-up company based on technology is you realize that getting from the lab bench to a real product in the world doing useful things is an extensive process, much more complicated than I knew at the start of this,” he said.

“There’s a lot of aspects to it that have nothing to do with the technology itself. Just having a technology that works doesn’t guarantee you’ll have an actual product out there at the end of the day.”

PARTEQ by the numbers:

$25 million
returned to Queen’s since 1987

548
inventors

189
active technologies in portfolio

322
patents issued from 1919 to 2007

82
patent applications in 2006-2007

47
licensed products

$1.03 million
in licensing fees in 2006-2007

21
startup companies formed

570
spinoff jobs created since 1987

Sources: parteqinnovations.com and Carol Miernicki Steeg

Andrew Bucholtz

Selected PARTEQ-nurtured products and processes on the market

Advanced materials:

• Nanoplate—advanced material used in aerospace, automotive, armour plating and sporting goods industries. (Integran Technologies, Inc.)

• Mica space heaters (Datec Coating Corp.)

Biomedical/pharmaceutical:

• KINARM robotic assessment system (BKIN Technologies, Ltd.)

• Obesity Management Kit (Queen’s Centre for Obesity Research and Education)

• Uprima—for the treatment of male erectile dysfunction (Pentech Pharmaceuticals, Inc.)

Energy/environmental:

• DTU 2.0—bacteriological testing technology for water systems (PDS, Inc.)

• Solar hot water heating system (EnerWorks Inc.)

Information technology:

• Axcess.Rx™ patient wait list software (AdapCS Canada Corp.)

• Open pit mine design software (Q’Pit Inc.)

Industry/infrastructure:

• Mechanical wood pulp bleaching (West Fraser Timber Co. Ltd.)

Transportation:

• Wheelchair and passenger securement systems (Q’Straint, Inc.)

Source: parteqinnovations.com

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