Key Contact
Contact us to see how we can help your Tech Transfer Office:
Poonam Tauh
Partner, Patent Agent
ptauh@mbm.com
1-403-800-9018
Overview
Canadian universities and research institutions play a crucial role in Canada’s research and development (R&D) efforts, technological advancements and general innovation ecosystem. Based on the 2023 Statistics Canada report, universities performed $17 billion in R&D in 2023, accounting for 35% of total Canadian research and development, spanning various industries, including biotech and pharma, clean technology, engineering, manufacturing, chemistry, and many more. This dedication to R&D at the university level also creates startups and encourages entrepreneurship overall.
The technology transfer office (TTO) within these universities and research institutions serves a critical role in bridging academia and industry and works to facilitate the commercialization of innovations and discoveries made within the institution’s labs into the market.
To have a successful commercialization program, universities, research institutions, and their TTOs need first to have a strong focus on protecting intellectual property generated by faculty, professors, researchers, and students at their institutions, ensuring that the innovations developed can be protected in a cost-effective manner through the right forms of IP. Converting these valuable innovations into income-generating IP assets generates revenue for the university and benefits the public by making new technologies more widely available.
This is where MBM can help. Protecting intellectual property is our only business. We understand the dynamic requirements of effective commercialization and can help you navigate the complexities of Canadian IP law. Our professionals have a broad range of technical backgrounds to match the wide range of inventions developed by academic institutions. We can help develop a strong IP strategy, implement it, and then guide you through your commercialization efforts.
MBM can provide a range of specialized services to support TTOs in universities and research institutions. By leveraging our expertise, we enable universities and research institutions to maximize the value of their IP while fostering innovation and protecting their long-term interests. Here is how we can assist:
Invention Identification, Due Diligence and Freedom to Operate (FTO) Analysis:
Conducting thorough IP audits to identify valuable innovations, followed by thorough due diligence to evaluate the patentability of inventions and performing FTO analyses to ensure that commercialization efforts do not infringe on existing IP rights.
IP Strategy Development:
Helping TTOs develop comprehensive IP strategies, including patenting decisions, portfolio management, and identifying opportunities for IP protection that align with commercialization goals.
Patent Drafting, Filing and Prosecution:
Drafting clear, legally robust, and well-structured patent applications tailored to Canadian patent law requirements and filing them with the Canadian Intellectual Property Office (CIPO). Followed by the prosecution of these patents to issuance and maintaining them in good standing.
Contracts and Agreements:
Drafting, reviewing, and negotiating contracts and agreements, ensuring that universities retain appropriate rights and receive fair compensation for their IP.
- Licensing agreements
- IP ownership agreements
- Technology transfer agreements
- R&D collaboration agreements
- Material transfer agreements
- Strategic alliances agreements
University Startups and Spin-offs:
Commercialization can occur through the creation of startups and spin-off companies that are often founded by researchers, students, and faculty. These startups and spin-offs play a critical role in bridging the gap between academic research and real-world applications, translating theoretical knowledge into practical, marketable solutions, attracting venture capital, and allowing for the development and scaling of new technologies. MBM can help these university startups identify which technologies need IP protection, carefully craft patent applications to make them more marketable and appealing to VCs and investors, handle spin-off transactions, draft and negotiate contracts and licensing agreements, and manage any other forms of IP, including trademarks, industrial designs and copyrights. MBM can work in collaboration with university incubators and accelerators to support these startups and spin-off ventures.
IP Valuation and Commercialization Support:
Assisting in valuing IP assets to support negotiations with potential licensees, investors, or partners and providing guidance on commercialization strategies. An effective commercialization strategy will transform academic discoveries into marketable products and services.
Legal Risk Management, Infringement Analysis, IP Litigation and Dispute Resolution:
Advising on potential IP infringements, both for protecting the institution’s IP rights and defending against infringement claims, helping institutions mitigate legal risks and resolve IP disputes.
IP Education and Internal Policies:
MBM can provide educational sessions and workshops for researchers, faculty, students, and TTO staff on IP law, Canadian patenting process and other forms of IP, commercialization best practices, and the importance of IP protection. MBM can also help develop internal intellectual property practice guidelines and policies.
Key Contact
Contact us to see how we can help your Tech Transfer Office:
Poonam Tauh
Partner, Patent Agent
ptauh@mbm.com
1-403-800-9018
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