UBC's Inventions and Licensing team (I&L) helps UBC researchers protect and advance high-potential discoveries. The team works with researchers to assess an invention's commercial potential, build a patenting strategy, evaluate spin-off potential, market to and negotiate with potential licensees, and finalize the agreements that move an invention to market. Each year, Inventions and Licensing assesses approximately 150 technology disclosures, files more than 300 patents, and manages a portfolio of over 2,800 patents.
This Staff Spotlight Q&A series is designed to introduce the people within the Inventions and Licensing team. Read all about Austin Lee, how his background has helped him work with researchers, what disclosing technology really means, and the rewarding work behind the license between Yinka Dene Economic Development Limited Partnership (YLP) and UBC.
Tell us a bit about yourself and the expertise you bring to the I&L team.
I'm a Technology Transfer Manager on Innovation UBC's Inventions & Licensing team, working across a mixed portfolio, including forestry, land and food systems, digital health, and medical devices. I completed a PhD in chemistry at Simon Fraser University not long after finishing my Bachelor of Applied Science at the University of Waterloo. Along the way, I also picked up some start-up experience, which really has helped me understand the dynamics of licensing technology to spin-off companies. With this mix of experiences, I can get up to speed on a discovery promptly in many fields and help researchers figure out practical steps to move their technologies forward.
What is your perspective on the ideal timing for submitting an invention disclosure?
It really depends on the researcher's goals. I've seen many cases from "disclose as soon as you have the idea" to "wait until it's fully matured and about to be published." The happy medium, in my view, sits between those two: disclose once your idea is mature enough that you have some preliminary data and has enough of a written description to explain it clearly (e.g., draft manuscript), but before it's so fully baked that you're about to publish the science the next day.
If you talk to us before you publish or present publicly, then we will have enough time to conduct our initial assessment before a public disclosure can permanently limit the options to protect the intellectual property (IP). If you're not sure whether it's the right time, just reach out. An early conversation costs nothing and often saves a lot.
What happens after you disclose? Does disclosing mean committing to a path?
No, disclosing technology doesn't lock you into anything. When you submit, we assess the IP and the market, and then we decide together what to do next: file a patent and license it, start a spin-off, or hold off while the research develops. We work with researchers along the way on what the best next steps are for commercializing their technology.
What is a UBC spin-off or licensing success you've helped make happen that you're proud of?
One I'm especially proud of, and one that was truly humbling, is the license between Yinka Dene Economic Development Limited Partnership (YLP) and UBC, which went on to spin off a commercial entity, Dicinfoam, a company dedicated to commercializing foams made from waste wood, built on UBC IP as its foundational technology. The project came out of Dr. Feng Jiang's lab in Forestry, as a collaborative research project with YLP, a business partnership formed by the Wet'suwet'en First Nation.
What made it special is both what it achieved and how it came together. It helped support a local First Nations community and its economic activity, and it was a project where every group across Innovation UBC pulled in the same direction. Our Sponsored Research team laid the initial groundwork for the collaborative research between YLP and UBC; our Inventions and Licensing team took the lead on transferring the technology developed under the Collaborative Research Agreement (CRA); and we worked closely with the Entrepreneurs and Ventures group to align on commercialization goals that both parties could agree on. It was a persistent effort along the way for two organizations with different backgrounds uniting around a shared objective. Finally, the agreement was signed, and Dicinfoam is actively pursuing their commercialization efforts as we speak. It's hard to ask for a more rewarding project than that.
Of the recent Express License updates, which matters most for your researchers, and why?
For researchers, the biggest win is transparency: the terms are all laid out up-front, so there are no surprises when a founder sits down to build their financial plan. A big part of that is how patent costs are handled. While UBC covers the first C$20,000, it is companies' responsibility to think about the patent budget going forward, as well as other financial commitments along the way. Business costs money, and the terms of Express License Agreements (ELA) being laid out now enable the founders to plan their IP or license costs with more predictability.
Researchers with a disclosable invention, or questions about whether their work qualifies, are encouraged to reach out to Austin or another member of the I&L team.
