Part II – looking at the shelf

posted by Paul Boldt
in patent, technology

Part I of this series considered the Opinion from which these two excepts originated.  The first presents a proposal for improving productivity.  It has some merit, but it was left dangling; no details of how to actually do this were presented, not even a hint.  Rather, the Opinion fell into a quagmire of slogans, catchphrases and marketing language.  The end result, it did not go anywhere.  

Here, in Part II, the proposal will be fleshed-out a bit.  In particular, I will walk through it with a current, real bit of publicly funded IP that is sitting on the shelf.  However, before digging into the example there is still a bit of housekeeping around the Opinion.  

house keeping

Let’s  revisit the excerpts one-by-one because the record has to be clarified before looking at a real example.  Namely, I want to focus on how things work instead of catchphrases.

“… protect and commercialize new ideas and the intellectual property (IP) that often starts in publicly funded research”

 “IP commercialization” is a very oft used pundit catchphrase.  “Commercializing new ideas” is quite straightforward, but is there separate, distinct IP commercialization?  There is, but I don’t think they are referring to patent enforcement here.  I think they are describing commercialization of an idea that is protected by IP.  Then, ensnared in this discussion is an assumption or understanding of what is being commercialized.  Does the idea encompass a product, waiting to be commercialized?  It is actually much more likely the idea or technology forms a building block that could be useful for a new or existing product.  

Let’s look at a fictitious example around the concept of building blocks v. products.  A well funded Ontario start-up is working on the world’s best pizza delivery robot.  VCs love Pizzbot, politicians love Pizzbot and the Press loves Pizzbot.  Heck, everyone loves Pizzbot! 

Pizzbot has progressed quite quickly after the Series B funding and a few “beta” robots are out-and-about delivering pizza.  However, Pizzbot has a problem.  Initial feedback indicates the pizza arrives cold.  One solution: improve the insulation around the pizza compartment.  However, there is not much space because of the vehicle’s and pizza compartment’s size constraints, and the engineers are not well versed in heat transfer.  Any insulation has to be thin and it should be off-the-shelf.  

A senior engineer at Pizzbot hears about an ultra-thin insulation for military winter gear developed at the National Research Council.  She determines that a patent related to the insulation has issued and after reviewing the Specification, including the Claims, she feels the technology is of interest.  The company decides to license the patent and incorporate the insulation in Pizzbot robots.  Thus, the patented technology solves a problem and forms a building block within the larger product i.e. robot.  It is commercialized as a building block.

“research ends up orphaned on the shelves of institutions that are unable to fund its commercialization … these cash strapped organizations are often raided by foreign multinationals”

First, commercialization is not the responsibility of the institution, whether it be a University or a public lab.  Research is their responsibility.  Obtaining a patent i.e. creating another asset should also be their responsibility.  Commercialization is not.  As it is not in their mandate, funding is irrelevant. 

Next, “raided” is a particularly loaded word.  It has connotations of criminal or pirate activity.  There is certainly no raiding of the IP shelves.  As I pointed out in an article from 2020, common examples likely stem from the corporate sponsorship of research, where the contract assigns any IP to the sponsoring corporation.  So, there is no raiding.  I also pointed out in the article that Canadian private capital could do the same thing i.e. sponsor the research.  Now, the IP rights are held in Canadian hands.  They may choose to license to corporations around the world, but the asset and wealth generation remains in Canada.  

Why are Canadians missing the boat?  What if OMERS sponsored Dr. Hinton’s AI research and they now collect royalties from Google because they own the IP.  The asset is in Canadian hands and royalties benefit Canadians.  Instead, OMERS crowed about their investment in a Belgium food delivery company.  

To summarize, most likely, when technology is commercialized it forms a building block within a larger structure or product.  Then, if Canadians want to be part of this commercialization we have to invest.  It is that simple.  

on the shelf

“Method and Catalyst for Methane Conversion to Cyclohexane” or WO2023/028705 is an applied-for patent that is currently sitting on the shelf.  It discloses technology developed at McGill University and by all appearances, stems from publicly funded research.  Overly briefly, it considers a Gallium Nitride (GaN) and Platinum (Pt) catalyst, where the Pt is provided as nano-clusters on a GaN layer.  It is said this catalyst facilitates the conversion of methane to cyclohexane at 350 oC, a modest temperature that is far lower than in the art.

The technology can be classified as a building block, where it forms a kernel that would find itself within a larger product.  In this case, the catalyst would be a central component to a larger chemical reactor or process.  Without being skilled in the art of catalysts or petrochemicals, it is fun to speculate about use of concentrated solar energy to provide the required heat.  The disclosed temperatures are readily achievable.  Between the catalyst and concentrated solar maybe the conversion of methane to cyclohexane goes from from an energy intensive reaction to one that uses renewable energy.  In any situation, the technology might be licensed by a large corporation that is interested in this market, or a startup that is looking to access renewable energy in industrial chemicals.   

How does this patent and technology relate to productivity?  The technology might allow a more efficient process, which in turn allows higher margins i.e. more revenue per input.  If it were brought to fruition by a startup, it might be a kernel for a new renewable-based chemical reaction and industry. For sure, more due diligence and development is required.  However, at the moment the technology is just sitting on the shelf, with little apparent attention from the current system of marketing technology developed in the government or Universities.  

What about further research?

Many avenues or threads of further study are there.  There might be work around the instant technology, including aspects of the GaN, aspects of the Pt and the reactants.  Further work might also explore details of the catalysts operability such as electron transfer.  Armed with this knowledge the research might expand to other III-V compounds and Pt.  Maybe they provide a similar mechanism for other reactions.  It is all speculation, but as I said before, the technology is sitting on the shelf.

There is a tendency in Canada to focus on catchphrases and pundit “speak”.  It might sound good, but it rarely advances solutions.  Let’s be strong enough to discuss the challenges head-on.  At the same time, we have to pay more than lip service to the technology that originates in public labs.  This includes respecting the research and shining light on it.  Then, we need to think about technology creatively and dream of its possibilities.  We have to look at patents as an asset tied to a piece of technology, that we want to bring to life.  A spreadsheet and metadata approach will not bring patents to life.