When business meets academia – The commercialization and protection of IP at McMaster’s Stem Cell and Cancer Research Institute

Blake Moran is a JD candidate at Osgoode Hall Law School.

When you tell someone that you have an undergraduate degree in science, a masters degree in business, and have started studying law, they usually say something like “seems to me like you REALLY can’t make up your mind!”  But this summer, I finally got the opportunity to engage all my interests at once. From May to August I was given the opportunity to challenge myself working for the McMaster Stem Cell and Cancer Research institute.

Some background: The David Braley Human Stem Cell Library is a multi million-dollar endeavor created at McMaster University to leverage academic and commercial applications of stem cell technologies for drug discovery and pharmaceutical development.  Led by Dr. Mick Bhatia the institute has recruited some of the world’s best primary investigators, graduate students, and post-doctoral researchers in respect to various facets of stem cell research to work on the project. 

Admittedly, before this summer, I hadn’t looked at a cell  — let alone a stem cell — since 2004.  It was a major culture shock to be thrown back into the area. “GFP”, “iPS”, “t-hESC”, “EB”… “O.M.G.”, I thought, it’s raining acronyms! 

On my first day on the job, I pretty much had no idea what anyone was talking about, but without hesitation, I was given some recent journal articles to get myself acquainted with the scientific aspects of the institute and I started to get my bearings. Then, after a few hundred pages of Irwin Law’s best IP overview, I had a much better picture of just what an amazing institute I was joining… and I was ready to roll.

The experience was incredibly rewarding – I was able to leverage my existing skills while learning new things all the time. Each day presented new challenges, new learning opportunities, and required a new set of skills to be an effective member of the team.  There was rarely even an opportunity to standardize tasks, because in such a dynamic environment, the tasks I was undertaking were new every day and the position evolved as the internship progressed. 

I started the summer by figuring out what had already been discovered and patented in the field. This kind of knowledge is essential so that a potential IP-owner knows what other rights exist that could possibly prevent them from obtaining their own proprietary rights. I conducted patent (prior art) searches both nationally and internationally in order to evaluate the patent landscape and to proactively prepare for any challenges that may come in gaining IP protection.  I then created a user-friendly database, so the information was consolidated, summarized and accessible to everyone on my team.

The project at McMaster is so important because every year thousands of technologies are created within academic institutions, but many have limited commercial value, and those that do have value are not capable of sustaining an organization on their own.  Traditionally the process taken to commercialize IP technology has been to either obtain industrial partnerships or license/sell the IP rights associated with these technologies to established industrial organizations.  These organizations can use the technology to improve existing products, services or manufacturing practices. However, the Stem Cell and Cancer Research Institute is moving beyond this traditional paradigm – leading the way for new companies and new industries in Ontario, by utilizing in-house business planning to commercialize innovative technologies.

With this in mind, my second task was to lay the business foundation for the institute. I drafted articles of incorporation, by-laws, and IP transfer agreements.  Preparing these documents required both precision and attention to detail. I was also able to provide input in the preparation of negotiations for IP transfers and presentations to academic boards.  Being a relative newcomer meant that I had to be methodical and learn on the go.  I asked a lot of questions and learned through both written sources and friendly lawyers and professors in the industry.

The last phase of my internship involved preparing an application for a multi-million dollar ask from the Ontario Ministry of Research and Innovation. We applied to the Ontario Research Fund – Global Leadership Round in Genomics & Life Sciences (GL2), which has the goal to fund projects that possess both scientific excellence and strategic value for Ontario.  The commercialization aspect of the grant proposal was based on the preliminary work that had been competed throughout my internship.

My experience this summer has meant a whole new level of appreciation for my business associations and intellectual property classes. I understand concepts beyond what has been taught and furthermore I’ve put many of these concepts into practice. It was certainly a privilege to be part of the team at the McMaster Stem Cell and Cancer Research Institute.