Making the Most of Patenting and Commercialization Opportunities (with Dr. Ashley Stevens)

In the second session of the 2104 Dental Innovation Forum, following Professor Sultan Al-Mubarak’s session on How to Become More Creative and Innovative, Dr. Ashley Stevens revealed strategies for making the most of patenting and commercialization opportunities. While he focused on the field of oral health research, his technology transfer advice should be valuable to entrepreneurs in many different fields.

Ashley started his career with Procter & Gamble, holding a number of positions in sales, marketing, commercial development, strategic planning, product management, and mergers and acquisitions. He then spent 10 years in the biotechnology industry, co-founding several biotech companies along the way. Finally, Ashley shifted into the technology transfer field, which led to 15 years of leadership at Boston University’s Office of Technology Transfer.

Today, Ashley is a Registered Technology Transfer Professional who often publishes and lectures on the topic of technology transfer, serves as an IP policy consultant at King Abdulaziz City for Science and Technology, and continues to teach two graduate-level courses at Boston University on Technology Commercialization.

Here is my summary of 3 of important points Ashley made during his session, along with my take on what them applicable to entrepreneurs in general:

1. Be realistic about your invention’s effective patent life.

Ashley described many of the discoveries brought to society by dentists, such as improved bacterial models, one of the most important commercially-improved molecules (TNF-alpha), a transcription regulator for TNF-alpha, and a polymer-infused ceramic composition suited for dental implants.

However, this last invention, which Ashley said was created by a colleague named Dr. Russell Giordano, was a major source of frustration for Ashley during his time at Boston University. The initial patent for the invention was filed in 1994, but a continuation had to be filed after 1995.

Ashley said, “Whenever I would ask Russell, ‘How’s this doing?’ He said, ‘It’s going to get to market in 6 months.’ He said that in 1995, he said it in ’97, he said it in ’99, he kept on saying it.”

Finally, the product launched in 2013, with a patent that expires in 2014! So, while the idea of a 20-year patent life seemed appealing at first, all that hard work only brought in about 2 years of effective patent life.

Osama’s takeaway for entrepreneurs:
Be aware of the patent terms in each of the countries you are targeting with your invention, determine a realistic launch date early on, and use the effective patent life in each country when calculating expected ROI.

2. Don’t go through the patenting process alone.

Ashley helped establish a team to support innovation at The Forsyth Institute in Massachusetts, a research institute dedicated to improving oral health. He brought together a marketing team member, two entrepreneurs with relevant experience, and other specialists to aid in the patenting process.

Ashley emphasized the importance of making a rigorous assessment of marketing opportunities and of the unique aspects of each invention early on. He said the next step from there is coming up with a list of known companies that market the type of product described, with a special focus on the value proposition.

Now that Ashley has helped put this system into place, The Forsyth Institute brings in two to three patents per year, as is expected from the volume of research funding it receives.

“The scientists told us that they now feel supported,” said Ashley. “We have changed the culture. They used to feel they were on their own; now they feel the institution understands them and supports them. We have drastically reduced the cost of patenting. We’re making more efficient patenting decisions and the two major patent list and two product development specialists have served without compensation. They are pleased to do it.”

Ashley now expects that the revenues that will be brought in by these new inventions will support Forsyth’s research mission in the years to come.

Osama’s takeaway for entrepreneurs:
Don’t try to do everything yourself. You may not have all the support that The Forsyth Institute provides, but you can put together your own team that combines legal specialists, marketers, and anyone else that can help you bring your invention to life.

3. Seek support from commercialization experts and members of your community.

Two of Ashley’s colleagues, Max Goodson and Nikos Soukos, are enjoying a 19-year patent life on a consumer device that improves periodontal health. The product, PhotOral, needs to be placed in the mouth for 60 seconds in the morning and 60 seconds at night. During this time, it emits a very bright light that penetrates into the periodontal tissue, killing periodontal pathogens.

After having the patent issued in September 2011, they partnered with a small start-up, incorporated only a month earlier, that handled the commercialization process for them. For funding, Nikos leveraged support from the Greek community in Boston.

“So, we signed the license in 2011, and I have to say I’m not sure I’ve ever seen a company move quite as fast as this,” said Ashley. “We had a prototype developed in time for the January Dental Conference, which was wonderful in terms of being able to attract the attention of a few leaders. And we did the first efficacy testing in less than a year from signing the license. And we got distribution with a global dental products company, and I think we used the company for 5 years, in just over a year or two.”

Osama’s takeaway for entrepreneurs:
Partnering with commercialization experts and reaching out to your community for support can make your dream a reality faster.

I hope you found this brief, non-technical summary of Ashley’s session interesting. If you enjoyed this post, be sure to check back for the next article in the Dental Innovation Forum series, which will cover Dr. Cale Lennon’s brand-building strategies.

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