Building on Research Innovation
A new resource in the Faculty of Science
since Spring 2006
Research Innovation Office in Science
Atmospheric & Oceanic Sciences
Biology
Chemistry
Computer Science
Earth & Planetary Science
Geography
Mathematics & Statistics
Physics
Psychology
RIO
Other
Disciplines
Erica M. Besso, Ph.D.
McGill OTT
Research Innovation Office
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EMB - background
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Ph.D. ’84, Polymer Chemistry, McGill
Positions held since 1984:
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Research Scientist, DuPont Canada, Kingston
Officer, Research Partnerships, NSERC
Founder, Brock Research Partnerships, Brock
University
Director, Research Services, Concordia University
Group Leader, Office of Technology Transfer, McGill
Three-year term as Science RIO started Feb 2006
Erica M. Besso, Ph.D.
Research Innovation Office
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Technology Transfer (TT)
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Broad definition of Tech Transfer includes entire spectrum
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Why do it ?
 Recognition
 Public good / Contribution to health of the
community
 Encouraged by government, given public funding of
research
 Capturing new research $$ [POP, I2I, contracts]
 Increasing personal income (sometimes)
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At McGill, mandate of Office of Technology Transfer (OTT)
Erica M. Besso, Ph.D.
Research Innovation Office
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Intellectual Property (IP)
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IP is any product of the intellect protectable by law
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IP implies ownership
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guaranteed by law once protected
IP can be sold (assigned) or leased (licensed)
What is a patent ?
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An exclusive monopoly to practice an invention for a
limited period of time
A patent provides incentive for companies to invest in
an invention, so it can become a product
Public disclosure prior to filing a patent application
precludes protectability
Erica M. Besso, Ph.D.
Research Innovation Office
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Publication and Patents
MUST THERE BE CONFLICTING PATHS TO SUCCESS ?
Publish or Perish (grants)
vs
Publish and Perish (patents)
WIN-WIN APPROACH: File for protection First, then Publish
Protection and Publication are not mutually exclusive!
If you think you may have an invention
residing in your manuscript, consult RIO
before submitting the MS to a Journal
Erica M. Besso, Ph.D.
Research Innovation Office
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Erica M. Besso, Ph.D.
Research Innovation Office
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Technology Innovation Chain – University
R&D
Grants
&
Contracts
Assessment of
Protectability
Commercial
Evaluation
Inventor
Identification of
intellectual assets
RIO
Due diligence
Discovery-Invention
IP created
Decision to
Commercialize
New Research $$
Opportunities: POP, I2I
Commercialization
Licence
Existing
Co.
Alternatives
OTT
Spin-off Co.
Contracts
Erica M. Besso, Ph.D.
Research Innovation Office
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WHAT are the Actions involved in Stage 1 of TT ?
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Report of Invention
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Assessment / Due diligence
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starts the process [PI, with RIO]
forms downloadable http://www.techtransfer.mcgill.ca/
[OTT; entails dialogue with PI]
Inventorship, protectability [patent literature search]
Technology strength, freedom to operate
Market / commercial viability
Conclusions form basis of commercialization plan
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Agreement re how will proceed & who will lead
Preparing & filing patent application may be the outcome
t ~ 90 days (+ 10)
Erica M. Besso, Ph.D.
Research Innovation Office
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What does McGill’s Policy on IP say?
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http://www.mcgill.ca/research/
Covers both Inventions and Software
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Must report to OTT those inventions that you wish to develop for
commercial purposes, before public disclosure
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Invention is jointly owned at the outset
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If OTT leads the commercialization activities, IP rights must be
assigned to the university.
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Net Revenue sharing [60:40 when OTT leads] detailed in policy
has a
Erica M. Besso, Ph.D.
When OTT leads, then McGill pays for patent costs
and other commercialization expenses. OTT
budget for patent protection
Research Innovation Office
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RIO objectives – SUMMARY
IP - RELATED
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INTERDISCIPLINARITY
Increase the identification and
timely disclosure of inventions
with commercialization
potential
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Facilitate and support
interaction with OTT
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Increase the understanding of
topics relating to IP among
researchers in the Faculty
Erica M. Besso, Ph.D.
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Identify & communicate
potential research synergies
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Explore and publicize
untapped funding sources for
multi-disciplinary projects
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Encourage joint projects with
industrial partners
Research Innovation Office
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Funding Opportunities Enrichment
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RIO approach:
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For the selected opportunities: secure additional info,
models, etc. to increase chance of success
Identify potential applicants (together with Associate Dean Research)
Communicate directly, provide feedback on drafts
Contact with funding agency, visits (as appropriate, if needed)
Publish funding opportunities + info on RIO web site
Current examples:
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NSERC Strategic Network Grants Program
MITACS Internship Program
Erica M. Besso, Ph.D.
Research Innovation Office
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Thanks for your attention!
I look forward to working with you.
To contact me:
erica.besso@mcgill.ca
ext. 3897
Dawson Hall – Room 409
http://www.mcgill.ca/science/rio/
On the RIO web site:
 Boosting interdisciplinary research
 Realizing commercial potential
 Interdisciplinary funding opportunities
 Facilities and services
 Meetings and courses of possible interest
Erica M. Besso, Ph.D.
Research Innovation Office
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