On this page: Patenting process | Spinning out a company | Licensing technology
One of the main activities of the Office of Innovation + Partnerships is to advise and support Faculty on the protection of their Intellectual Property (IP). Protecting IP is the logical first step to take if there are intentions to eventually commercialize a technology and bring it to market. But while these activities may be easy to conceptualize, the actual execution can be long and difficult.
Understanding the basic steps in these processes can help prepare Faculty better prepare their applications, while also avoiding early missteps which can complicate matters later on. For example, being aware of the implications of publishing research results with respect to IP rights.
Before discussing the process of securing a patent, it is useful to understand what a patent actually is, and what protections they do afford. First of all, potential inventors need to know that a patent is a license issued by a national government that protects the invention in question from being copied by another party in the region where the patent was filed. A US patent does not protect you from being copied in Canada, for example. Furthermore, there is no such thing as an international patent that covers the world – patents are generally filed on a country-by-country basis.
The most fundamental step in the patenting process is to determine whether or not an invention is indeed patentable. To do that there are three basic questions to answer:
- Is it novel? To be patented, an invention must be unique. Given there are millions of researchers worldwide, working in fields that date back many decades, it is possible that what seems new to you as already been discovered.
- Is it useful? Patents are only issued where there is a clear utility of the invention. It must have a function that delivers a real benefit.
- is it non-obvious? Similar to the threshold of novelty, an invention must not be obvious to others working in the same field. It must be innovative in some way.
The Office of Innovation + Partnerships is ready to help you make these determinations (i.e. as part of the assessment of the ROI) and will provide advice on each step in the patenting process. An important point to know is that McGill University operates on a shared ownership system, which divides the rights to an invention between the inventor and the University. Full details on this policy are explained here. In addition, Faculty inventors have the option to transfer all of the rights to themselves, but in so doing, they must undertake patent applications, patent maintenance, and other fees on their own.
Assuming that the intention is indeed patentable, and the inventor does not take a transfer of rights, then the University will work with the inventor to being the application process. Note that the patent review process is handled by government agencies, not the University, and that this review can take time – up to a few years depending on the sector. However, once accepted, protection of the patent extends to the date the patent was filed, so your technology will be protected while you await the results.
Spinning out a company
A patented technology can form the nucleus for a new business venture, and there are many examples of successful companies that have emerged from university labs. Indeed, many McGill Faculty members have done this, and taken their technologies to market by spinning off a company. But building a company and conducting research are very different activities, and skills that helped make an important discovery may not go very far when faced with the demands of launching a business.
The Office of Innovation + Partnerships has developed a basic guide on this process. The following steps are part of the process of spinning off a company (some of these can be completed even before a patent application is made):
- Develop commercialization plan and strategy IP
- Network and seek feedback
- Complete milestones and finalize protection
- Build a team
- Find early customers
- Prepare a funding strategy
Below are examples of successful spinoffs.
Case Study 1
Case Study 2
Spinoff company list
McGill has numerous inventions with commercial value available for licensing and development by the private sector. These technologies cover many fields, including health care and biotechnology, advanced materials, agriculture, and engineering. In licensing McGill's technologies to industry, the Office of Innovation and Partnerships strives to meet the needs of both the University and its industrial partners. To reach potential partners, Technology Transfer Managers rely on their network of contacts in industry and attend business partnering conferences.
For companies looking for a competitive edge, or who lack the resources to undertake their own research, McGill University is your ideal partner. We have the tools and skills to put ideas into action, and to help find the solutions to your business problems. There are also special funding programs available that can help offset costs related to finding your next big hit. Among these are the NSERC Alliance Grants, which require academics to find external partners, or Mitacs, which also fosters partnerships between academia and industry.
For those with more specific needs in mind, we also can offer access to cutting-edge laboratory tools and equipment for your own research activities. This could include actual ground-breaking research (which requires a Research Agreement) or it could be more functional in nature, such as testing a specific device (which would require a Service Agreement).
There are also many technologies that already have been lab-proven and are ready to be put into application. McGill researchers have made hundreds of discoveries with commercial potential – you can see what is available for licensing here. Use of these technologies would require a license agreement, something that is handled by Innovation and Partnerships.