U of T's tech transfer office sweetens inventions policy to boost commercialization

The Univ of Toronto is seeking to boost its commercialization output with major changes in its inventions policy including an enhanced rewards system and greater flexibility in the assignment of intellectual property (IP). The new policy follows a decision to bring the technology transfer office in-house after years as a self-funded, not-for-profit organization and rename it the Innovations Group.

Armed with $3 million in annual funding, the Innovations Group has established three expert teams to focus on promising discoveries in the life sciences, physical science and information and communications technology. The funding also allows the involvement of graduate students and the exploitation of so-called non-traditional IP in open source and social environments.

"We're addressing some of the incentives to working with the Innovations Group and making it easier for researchers to do what they do best," says Dr Tim McTiernan. "It's early days yet but so far the reaction has been pretty good. Disclosures seem to be up this year compared to last year reversing a downward trend. There's also a feeling that people are assigning IP to the university more readily than before."

While the U of T is by far Canada largest university in terms of research income and the volume of research conducted on campus and at its affiliated hospitals, its commercializing performance has been mediocre. McTiernan says the university does quite well in raw terms but that track record is not nearly as impressive when its research volume is taken into account.

"We have not lived up to our potential and it's a central issue with the university now," he says. "We also haven't told our story well in the past. Now we're making it as clear as we can that we have a service and we're interested as an institution to applying the value of research to applications for economic, social and community benefit."

Perhaps the most significant change to the university's inventions policy is the lowering of the management fees and share of net revenues. Under the previous U of T Innovations Foundation, researchers that chose to assign their IP to the university were charged 75% of net revenues as well as a large management fee. The result was that many researchers chose to commercialize the IP themselves.

Under the new policy, the university retains 20% of net revenue as a management fee while the inventor retains 75% of remaining net revenue with 25% going to the university. Of the latter, it is distributed within the university to the inventor's division, the inventor's department and general revenues. If the cumulative net revenue is more than $100,000, 70% goes to the university's Connaught Fund while the inventor's division and department get 15% each.

"Previously there was a disincentive built in with the revenue split and then there was a hefty fee," says McTiernan. "As part of the process of internalizing the technology transfer office into the university, we looked at systemic barriers to people coming forward."

The new policy also does not compel researchers to choose whether to assign IP rights to the university at the time of disclosure. Now the researcher has the option to consider assignment while the Innovations Group conducts due diligence.

Part of Mars innovation

In addition to its new inventions policy, the Innovations Group is also collaborating with other organizations. It is a member of MaRS Innovation, a new commercialization partnership of 16 Toronto-based academic research institutions. MaRS Innovation was one of 11 winners in the recent competition for funding from the federal Centres of Excellence for Commercialization and Research (CECR) program (R$, February 25/08).

The Innovations Group is also reaching out beyond the Toronto region through an alliance with PARTEQ Innovations, the tech transfer arm of Queen's Univ (R$, November 27/06). PARTEQ is widely considered one of Canada's most successful technology transfer/business development organizations and U of T now has access to that expertise.

"We're still working on it. Joint opportunities are hard work and it's a slow process but we have a couple of initiatives," says McTiernan. "We're evaluating technology jointly and (PARTEQ president and CEO) John Molloy is a big champion of collaboration."

Collaboration beyond the confines of U of T is an acknowledgement that even Canada's largest university cannot be all things to all types of discovery. McTiernan says technology transfer and commercialization practices are experiencing the same evolution towards greater specialization that research is now going through.

"That specialization must be matched in technology transfer capacity. Not every university can be specialized in all fields," he says.

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