It was a big deal here at TEC Edmonton last week, when a licensing agreement was signed between TEC Edmonton ’s Technology Transfer group and GreenCentre Canada. The agreement sets the stage for a promising, environmentally-friendly drug manufacturing process developed by University of Alberta chemistry researcher Dr. Dennis Hall to continue smoothly down the long and winding road to commercialization.
Dr. Hall’s work is ground-breaking. His green, efficient, room-temperature process of making drugs is in stark contrast to the complex, high-temperature, toxin-creating process currently used to create what are known as amide bonds, which are also present in agrochemicals, fragrances, and other chemicals.
Licensing is an under-appreciated aspect of TEC Edmonton’s services. It takes expertise and experience to negotiate a licensing agreement that accounts for hundreds of factors, yet leaves all parties satisfied it’s a fair deal.
Among other mandates, TEC Edmonton serves as the technology transfer agent for the University of Alberta. All “Reports of Invention” from any campus researcher are vetted through TEC Edmonton’s Technology Transfer department – a group of experts who assess inventions for potential commercial application.
If TEC’s assessors see some practical value, and the inventor so wishes, TEC Edmonton proceeds to protect the inventor’s intellectual property or IP through a patent application.TEC Edmonton becomes an “agent” for the inventor – marketing and promoting the invention, raising funds for further research.
Dr. Hall was happy to assign all aspects of the commercialization process for his new amide bond manufacturing process to the U of A – hence to TEC Edmonton.
So what does TEC Edmonton do? Darrell Petras, an in-house licensing expert, was assigned Dr. Hall’s amide bond formation file. “Our job is to introduce new technologies like Dr. Hall’s to possible partners, and, if there’s substantial interest, to negotiate a collaboration, and ideally, a licensing agreement.”
And while there’s always interest in potentially game-changing technology, there’s always the yawning gap between “potential” and “actual.”
Drug companies, for instance, are presented with new ideas and processes on a near-daily basis, yet only invest in a tiny percentage. “Potential partners all saw Dr. Hall’s process as a great idea,” says Darrell, “but it’s still very early-stage, and hence high-risk.”
Enter GreenCentre Canada, one of 22 national Centres of Excellence for the commercialization of new discoveries and technologies coming out of Canadian universities and industry. The national centres of research are funded by academia, industry, government, and not-for-profit organizations. GreenCentre Canada, housed at Queen’s University in Kingston, Ontario, is dedicated to further developing and commercializing environmentally- friendly alternatives to traditional chemical and manufacturing products and practices.
GreenCentre liked what Dr. Hall and TEC Edmonton had to offer.
The deal was synergistic. At the U of A, Dr. Hall did not have the resources to test out his technology to the point where a chemical company would be prepared to commercialize the promising chemical-free drug process.
The GreenCentre, still working closely with Dr. Hall, can fund the “proof of principle” scientific research still to be done on the promising process. The GreenCentre can then present the process, if satisfactory to all concerned, to its corporate sponsors for a “first glance” at potential commercialization.
Here’s where TEC Edmonton’s negotiating skills came into play.
Think of a young promising hockey player that is sought after by a professional team. He has yet to play any professional hockey, yet his agent and the team will hammer out a contract full of agreed-upon outcomes to all kinds of possibilities – future achievements, salary variables, scoring bonuses, injury compensation and so on.
“We had to be satisfied that the GreenCentre offered the best opportunity for Dr. Hall’s work to be advanced,” says Darrell, “that the GreenCentre can build on his research to the stage where it’s more readily available and attractive to industry.
“It had to be a deal that, if and when the process is further licensed down the road to industry, the researcher, the U of A and GreenCentre would all receive a fair share of royalties. At the same time TEC Edmonton is a joint venture between the University of Alberta and the City of Edmonton. So we must take into consideration the needs of our stakeholders.
"We wanted to make sure any GreenCentre research opportunities to further Dr. Hall’s work would come back to U of A researchers, that his intellectual property would be patented and protected. The actual financials are part of an over-all picture.”
In the end, says Petras, it’s all about fairness … that if a process like Dr. Hall’s catalytic amidation method turned into an industry standard, significant royalties flowing in from licensing agreements would be divvied up among the original parties in a way all felt fair.