Industry welcomes new ISED marketplace for public sector IP, but still faces barriers leveraging university research

Among a flurry of recent initiatives to leverage public sector investment in research to benefit Canadian businesses, ISED has launched a new patent marketplace called ExploreIP to help entrepreneurs discover and commercialize public sector intellectual property.

ExploreIP is a searchable online database of more than 2,500 patents held by 34 government, academic and other public sector institutions, such as the Canadian Space Agency, University of Waterloo, TEC Edmonton and the CHEO Research Institute. Through the platform, businesses can find and learn more about the patents, and contact patent holders to negotiate a licensing agreement or explore a research collaboration. The IP comes from a range of fields, including electrical, mechanical and civil engineering, instruments, chemistry, as well as furniture, games and other consumer goods.

“Many government departments, universities and other public sector institutions have conducted extensive research and development, and hold thousands of underused and licensable patents. We are making public sector IP more accessible to inventors and facilitating connections in our innovation networks by introducing ExploreIP,” said ISED in a statement to RE$EARCH MONEY.

So far, the response to ExploreIP has been uniformly positive, said Patrick Smith, a patent agent and partner at Gowling WLG, who is president of the Intellectual Property Institute of Canada. “The principal thing that industry loves is now there's a place where you can go and see if there are potential solutions to problems that they have," he said in an interview with RE$EARCH MONEY.

Need for change

ExploreIP is one of a suite of new tools developed under the Intellectual Property Strategy, a five-year, $85-million plan to boost innovation and commercialization in Canada, part of which is facilitating the use of publicly funded research.

Canadian universities and research institutions spent $5.6 billion on R&D in 2017 but only generated $75 million in licensing income the same year. - Association of University Technology Managers

Canada produces high-quality research, but as Karima Bawa, a senior fellow at the Centre for International Governance and expert on the commercialization of university research and development, has noted, “Canadian universities fail to optimally leverage their research output to advance productization of innovation and hence economic outcomes.”

Last April, data released by the Association of University Technology Managers (AUTM), a membership organization for university technology managers, supported Bawa’s assertion. The report surveyed Canadian licensing activity and showed that licensing income generated by Canadian universities and research institutions is low and has been consistently low for a decade. Specifically, universities and research institutions spent $5.6 billion on R&D in 2017 and generated only $75 million in licensing income the same year. However, the report also showed that licensing income increased by 6 percent over 2016 and has been trending upward for a decade.

Bawa has also found that Canadian businesses perceive IP licensing negotiations with universities as onerous and protracted, an issue that may slow innovation. Smith echoed her findings: “I've heard some people say it’s just too hard to extract technology from universities or other public institutions.”

As a marketplace, ExploreIP won't directly address that issue. "The IP marketplace will notify people there's technology available for license, but the next step is unknown," Smith added. "Once people enter into negotiations, will the system be sufficiently malleable to allow for the commercialization of some of these great ideas?"

The Australian example

ExploreIP is modelled on a similar marketplace, SourceIP, in Australia, and was developed in partnership with the Australian government agency that administers IP rights and legislation.

SourceIP launched in 2015 as part of an effort to boost collaboration between public science and industry, and has grown to include 9,000 patents from 73 research organizations, including all of Australia's universities. In 2017, the country's two main government funding agencies began to require institutions to list IP generated by public funding on SourceIP.

Going one step further, the funders also required the use of Australia’s “IP Toolkit for Collaboration,” developed to simplify the management of IP in collaborations between researchers and businesses. It is designed to facilitate university-industry collaboration and consists of checklists of key issues that may arise, templates for contracts, confidentiality agreements and term sheets, and guides on developing partnerships and managing IP.

Among SourceIP’s partners are the Danish Patent and Trademark Office’s IP Marketplace and the Asia IP Exchange, based in Hong Kong, which has more than 28,000 IP listings, including patents, trademarks, copyrights and registered designs.

Next steps

In a statement to RE$EARCH MONEY, ISED said Canadian experts customized ExploreIP for Canadian use and are working closely with their Australian collaborators to identify enhancements that will benefit both platforms.

ISED indicated that ExploreIP will offer additional features in the future, including other forms of IP, such as copyrights on artistic and literary works, and designs, such as protected product ornamental designs. This work is expected for 2021.

Smith said he would eventually like to see ExploreIP expand to include privately owned IP: “Small inventors don't have access to technology transfer offices to help market their ideas. So it would be a real boon to them to be able to post their patents publicly.“

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