Working with Einstein’s OBBD: Know When It’s Time
Einstein’s office of biotechnology and business development (OBBD) guides the transition of technologies, stemming from investigator research to the market, while protecting the intellectual property (IP) rights of Albert Einstein College of Medicine and its faculty. As such, OBBD staff is responsible for managing invention disclosures, the related IP and patent applications, licensing of technologies, and management of commercial partnerships and other research and IP-related agreements.
OBBD staff help researchers determine whether and how to take their discoveries and inventions to market.
For many researchers, though, there is the question: When is the right time to seek OBBD’s expertise?
“Often, investigators assume their research is purely ‘academic’ and do not take the time to consider its potential commercial value,” said Nilam Sinha, Ph.D., marketing and licensing manager of OBBD. He urges investigators to reach out to OBBD early if they have questions about the potential inventions related to their research.
He added, “Wayne Gretzky’s famous advice applies to disclosing inventions: ‘You miss 100% of the shots you don’t take.’”
Taking the Initial Steps
Janis Paradiso, director of OBBD, and Nilam Sinha, marketing & licensing manager
“The first steps in pursuing the marketability of a new invention are IP protection and licensing potential, which are two cogs of the same machine,” noted Janis Paradiso, director of OBBD.
She explained that an invention that requires substantial resources to further develop, such as a human therapeutic or diagnostic, needs to be IP protected for it to be commercially attractive, usually through licensing of a patent – the most common type of IP protection OBBD files for Einstein inventors. This is because issued patents provide the commercial partner a period of market exclusivity during which competitors are prohibited from making, using, or selling the same product. This exclusivity allows pharmaceutical companies to establish a competitive advantage and recoup their research and development investments required to bring the drug product to market, which averages more than $1 billion dollars.
A patentable invention must fulfill three criteria, noted Nilam. “It needs to be novel, have some value of utility, and be non-obvious to others in the field.”
Assessing One’s Invention
Starting in January, schedule a meeting with Mark Baron to learn about IP matters
When it comes to determining the utility of an invention, OBBD urges investigators to consider what the envisioned end-product will be, what need the product will fulfil, and who would pay for the product.
“Not all inventions, however meaningful for the advancement of science, have a commercial value that creates revenue. This is an important consideration when deciding to invest in IP protection,” said Nilam.
“Finding the utility and commercial value can be challenging,” he added. For this reason, he strongly encourages investigators to take full advantage of the weekly virtual office hours dedicated towards IP-related matters that Mark Baron, OBBD’s IP manager, will begin offering in January 2024, every Thursday between 1:00 and 2:30 p.m. Individual researchers or collaborators can schedule a meeting with Mark by emailing him at mark.baron@einsteinmed.edu. You’ll be scheduled for a time within that timeframe.
Taking Science to Business
Once a technology has been disclosed and Einstein has filed for IP protection, OBBD can then determine a marketing strategy to reach out to potential licensing partners, which is required to further develop the invention through the development lifecycle into a marketable product. Success depends on many factors, like the invention type. For example, therapeutics requires taking risks, investing time and money, and navigating the regulatory landscape. Other factors include unmet need, market size and trends, and investor interest.
Among those who have success thanks to help from the OBBD is Xingxing Zang, Ph.D., professor of microbiology & immunology, of oncology, of medicine, and of urology. “The outcomes of my collaboration with OBBD have been fruitful. They’re responsible for all of my technology licenses, and working with them has been outstanding,” said Dr. Zang, who also is a member of the Montefiore Einstein Comprehensive Cancer Center and holds the Louis Goldstein Swan Chair in Women’s Cancer Research.
His technologies have been the foundational IP of four start-up companies and his successes currently include two cancer drugs in clinical trials.
Offering Business & Industry Insights and Experience
Throughout the year, OBBD organizes multiple webinars through two seminar series to provide additional support and inspiration to investigators interested in learning more about patenting or business endeavors. Its “IP & Coffee” series hosts patent lawyers, who provide education on pursuing IP protection, while its “Science Meets Business” series invites speakers from industry to discuss a wide range of biotechnology and business development topics. The subject of these talks is derived from OBBD surveys of Einstein Montefiore faculty.
“For those interested, these seminars can impart helpful knowledge and provide answers to questions one may have,” said Nilam.
The majority of the webinars are also recorded and posted on the OBBD website, grouped by category for ease of reference. “While we encourage the Einstein community to attend the event live, so that they can participate in the useful Q&A, the recordings allow one to listened to at any time, similar to how one would listen to a podcast,” said Janis.
OBBD functions are not restricted to investigators, however. The office also offers the Technology Transfer Internship Program (T2IP), which provides an opportunity for graduate students and postdocs to build experience for careers beyond bench science, such as in technology transfer offices or at venture capital, and consulting firms.
The T2IP is flexible, with work completed remotely. “This allows interns to build valuable experience while still focusing on their prime responsibility – research work in the lab,” said Nilam.
He added, “We both benefit mutually from the program. The interns help us manage our workload while getting to learn through hands-on projects. We’re preparing them for a fast-expanding field, and the skills they acquire on these projects are transferable to many industries” noted Janis.
If you’re interested in learning more about how OBBD can work with you on your discovery or invention, or would like to know about participation in T2IP, email biotech@einsteinmed.edu.
Posted on: Monday, December 11, 2023