Publish? Nowadays, it's patent or perish

By Pete Young
Wednesday, 22 May, 2002



A cultural shift inside research labs is leading growing numbers of biotech scientists to adopt a patent first, publish later approach to their research.

David Henderson, managing director of the University of Queensland's commercialisation arm, Uniquest, says the shift is part of changing attitudes toward commercialisation.

"More and more scientists are realising that if they publish their findings (without protecting the IP) nobody will invest in the work and they will be totally reliant on government grants to take it forward," he said.

Five years ago, the benefits of commercialisation barely lit the radar screens of the university's scientific researchers.

Thanks partly to the 40 commercial spin-offs and start-ups that Uniquest has launched, "more are seeing the benefits and some are even steering their research into commercial areas," Henderson said.

They have noted that investors see little reason to risk large sums of money in unprotected biotech inventions.

"So the issue of patenting before publishing is being discussed now where five years ago it wasn't."

In practice, the changing attitudes lead to a delay in publishing rather than an permanent gag on making experimental results known to the research community.

However scientists were usually passionate about proving up their ideas and now view venture capital injections as another avenue for funding further work.

More than half the spin-offs orchestrated by Uniquest since 1995 have been biotechs. A wholly-owned subsidiary of UQ, last year it earned revenues of $47million.

A large slice of its work is about translating research efforts into packaged deals designed to appeal to pre-seed and seed funding organisations, venture capitalists and angel investors.

Packaging a promising piece of research often begins even before a provisional patent is lodged to protect an idea, Henderson said.

The process includes research on market size, existing competitors and rival research work. That is bundled up with a development plan and an estimate of the sum needed to take the project to its next stage.

Uniquest then pitches the package at the segment of the funding community it believes will find it most attractive.

From experience, it knows the aspects of the package requiring the most work will be its financial and legal structures, Henderson said.

These have to be fine-tuned for different strata of the financial partnering world. The large pharmaceutical companies, for example, are more interested in setting up licensing arrangements, said Henderson.

Different approaches But venture capitalists are more comfortable with creating a new company as their investment vehicle while seed fund managers or angel investors can go either way.

The level of maturity of the project also dictates which type of partner is sought out.

Early stage projects safely through the proof-of-concept zone are aimed at pre-seed and angel investors who bring anywhere from $50,000 to $500,000 to the table.

"If you have runs on the board, with some human trials, you are looking at venture capital," said Henderson. "And once you have human data, then it is the big pharmaceuticals."

Where licensing deals typically involve offshore partners, investment packages are overwhelmingly taken up by domestic players, Uniquest found.

"We have found a lot of resistance in terms of getting any US venture capitalist to put money in here," said Henderson.

"They don't want to invest in something that is a 15-hour plane ride away because that requires sending someone out a couple of times a year which takes a week out of their time.

"It is easier for them to invest in something that is a one hour car ride away." Another tricky area of the deal-structuring process involves setting schedules for experiments that balance scientific and commercial concerns.

Uniquest commercial development manager Mark Harvey said: "From the point of view of adding commercial value, there are killer experiments -- short, sharp and to the point -- which will answer specific commercially-focused questions."

Jumping such experiments up the queue can clash with researchers' inclinations to systematically unravel the complexities of the problem they are working on.

"The way to handle this is to flush out all the issue and get everyone to agree to a research development plan before you get to the contract-signing stage," said Harvey.

CATCH OF THE DAY Mark Harvey is a 36-year-old fisherman with an MBA and post-doctoral work in medical research as a tenured academic on his CV.

If that makes him sound like a special kind of fisherman, he is.

Harvey's working day is spent trawling not the high seas but research labs scattered through the Health Sciences Faculty of Queensland University.

He is one of six commercial development managers maintained in various faculties by the university's commercialisation arm, Uniquest.

Collectively they comprise the essential first link in the chain of specialists needed to transform a lab invention into a dollar-generating outcome.

Among themselves, they refer to each other as fishermen and their catch consists of research ideas or breakthroughs that carry a strong whiff of commercial potential.

When they find something "we bring it back and give it to the people (Uniquest experts in deal structuring, licensing and finance) who can gut, clean, scale and cook it," says Harvey.

His job demands social skills, technical expertise and a nose for the political windshifts of academia.

"It is all about developing a rapport with a large number of researchers and maintaining it, about having an idea of what is going on their labs and the time frames involved."

Even if researchers don't have anything on the boil at the moment, "when something does arise, you want the first thing they wonder about to be whether it has commercial potential and to come and speak with you about it."

Harvey's light reading consists of grant submissions -- more than 50 a year -- from faculty researchers and "there is a lot of just dropping in and saying hello."

Typically, he sets up a first contact via email to drop into a lab for a relatively freeform discussion with scientists about what they are doing.

They may counter with questions about commercialising IP so the meeting often becomes a two-way street, he says.

Being part of the university structure (parts of Harvey's salary are paid by the faculty itself) gives him an insider's cachet which helps to negotiate political cross-currents.

"It is one thing to identify technology and another to package it up in a university environment which is very political.

"The IP could be entangled between two or three research institutions. You need to understand the politics going on between them before you can structure the deal. It might require another deal behind the scenes whereby an institution which has partial ownership on the IP will assign or licence their rights in order to present a venture capitalist with clean IP.

"So you've got to be able to work in an efficient way through a tiered structure in which a lot of politics are being played."

A fisherman's career path logically includes becoming the CEO or manager of start-ups that result from his trawling expeditions.

After more than two years as a fisherman, Harvey has not yet reached that fork in the road. But if it does happen, he suspects he will eventually return to do some more trawling for Uniquest.

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