Q&A: New SFU services for legally protecting researchers’ inventions and maximizing licensing opportunities

March 08, 2022

There is growing interest surrounding Simon Fraser University’s Technology Licensing Office (TLO) and how its new services will help better serve our faculty, graduate students and other university researchers in SFU’s inventor community.

The TLO is a key part of SFU Innovates, the university’s innovation strategy for engaging researchers, staff and students with our communities and partners to solve societal challenges through innovation and entrepreneurship. The office enables a streamlined pathway for SFU science and technology advancements to get out into the world to drive innovation and change.

Kamaldeep Singh Sembi, inaugural director and IP legal counsel in SFU’s Technology Licensing Office.

We sat down with Kamaldeep (Kam) Singh Sembi, the inaugural director and IP legal counsel for SFU’s TLO, to discuss the new services, what makes creating intellectual property (IP) at SFU unique from other universities and why SFU innovators should be excited for the journey ahead.

Sembi joined SFU in 2020 to lead the newly established TLO, which has since grown its team to better support the SFU community. He also contributes as an IP thought leader on national and local panels, including Quantum Days, the Kids Brain Health Network, SFU VentureLabs and JD Advantage from the University of British Columbia’s Peter Allard School of Law. In addition, he guest lectures at the SFU Beedie School of Business’s Invention to Innovation (i2I) program.

Before joining the university, Sembi accrued five years of experience managing IP portfolios for blue-chip companies including Apple and Google in San Francisco’s innovation hotbed, Silicon Valley. With almost two decades of experience, his prowess in IP law leans on his combination of skills and experience working as an electrical engineer and lawyer.

What excited you the most about working at SFU?

To be able to come in and shape the TLO at a university that already has a robust innovation ecosystem, but still has growth potential, was a very inviting opportunity for me. Our office now helps complement other interdisciplinary SFU programs that provide entrepreneurial mindset training for scientists and engineers to commercialize their inventions, such as the i2I program.

We also complement our incubator and accelerator programs and services that support new ventures in commercializing and scaling up their science and technology innovations, such as SFU VentureLabs and Coast Capital Savings Venture Connection at SFU.

As an illustrative example, I am reminded of SFU spinoff Ionomr, a clean-tech and advanced materials company that had its first IP protected through SFU, recently closed a series A funding round in excess of $15 million. Before this success, Ionomr was supported by nearly every component of the SFU Innovates ecosystem, including 4D LABS, i2I, Coast Capital Savings Venture Connection, SFU VentureLabs and the predecessor to the TLO.

How does the TLO help support innovation, IP protection and commercialization at the university?

The TLO operates on an efficient professional service-based model. We provide IP protection and technology licensing services and support to any SFU member, but our services are primarily aimed at faculty, graduate students and other university researchers.

If an innovator chooses to engage the TLO, our talented team provides expert advice and in-depth support with legal IP protection and strategy for commercialization. We’ll conduct a market analysis to determine the appropriate value of their IP against similar technology and generate licensing opportunities by leveraging our office’s vast corporate networks. On the innovator’s behalf, we’ll work with external counsel to protect the innovator’s new technology while covering all of the associated legal costs. In addition, we also provide translational grant writing support.

In addition, the university has just launched SFU’s Volker IP Fund, which helps open doors for scientist entrepreneurs in the SFU community to commercialize their science-based innovations by funding the legal costs of pursuing patents or IP protection. With this fund, successful applicants can receive up to $25,000 in repayable awards to reimburse legal IP costs. In addition, we also provide translational grant writing support for the commercialization sections.

What makes creating IP unique at SFU and how does that benefit our researchers?

SFU is one of only a few Canadian universities that has an inventor-owned IP policy, which means that any SFU member who creates IP, owns it (and not the university). Researchers then get to decide their level of engagement with the TLO to help commercialize their invention. This is a unique benefit to SFU’s inventors, relative to most universities, where the power to control and decide what happens with the creator’s IP rests with the creator.

Another unique attribute about SFU is that while the TLO does approve inventions for commercialization support—based, in part, on economic return—it is far from the entire evaluation criteria used. If the prospective invention will have a large social impact on society, this weighs into the evaluation of a prospective technology seeking TLO commercialization services.

Our long-term goal is to develop a pipeline of SFU science-based technological advancements that will get out into the world to drive innovation and social change.

What developments on the horizon should SFU’s innovators look forward to the most?

Innovators have a good reason to be excited about the revisions that the university’s IP policy is currently undergoing. These policy changes should be more favourable towards SFU members receiving even more control over their IP, which will help further incentivize external investment and commercialization.

The wheels are already turning and a revised IP policy is going through the according processes to eventually replace the current IP policy. I would suggest to be on the lookout towards the latter half of this year for the revised policy to come into force.

For questions about the TLO’s new services or the Volker IP Fund, contact Sembi directly by emailing tlo_dir@sfu.ca.

The Government of Canada's Research Support Fund (RSF) supports this initiative with means for staffing the Technology Licensing Office. These positions help SFU researchers build effective working relationships with communities, industry, governments, NGOs and non-profits to increase the solution capability of SFU innovators.

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