'Good scientists do not automatically become inventors'

Associate Professor, Dr. Tu Diep Cong Thanh is the author who owns 10 patents issued by the US Patent and Trademark Office (USPTO) in the fields of medical equipment, patient support and rehabilitation. From 2023, he will be Director of the Intellectual Property and Technology Transfer Center (IPTC) of Ho Chi Minh City National University - the unit that establishes rights, registers protection, commercializes and transfers the university's research results. IPTC is also a member of the World Intellectual Property Organization's Network of Technology Transfer Support Centers.

From the perspective of inventors as well as managers who have supported intellectual property for thousands of scientific research, Associate Professor Thanh shared with VnExpress about the formation of inventions from research results and the path to market, in the context of Vietnam identifying intellectual property as an important national resource.

- What is the problem you encounter most when supporting scientists in building and protecting intellectual property from research?

- A problem we often encounter is that scientists cannot identify intellectual property or identify it too late after publishing articles, presentations or posting information online. This one factor alone can destroy the opportunity to establish intellectual property. In addition, many people confuse scientific novelty with patent novelty; an article with scientific value does not necessarily create a technical solution eligible for protection.

Thereby, we see the problem more broadly: good scientists do not automatically become patent experts. To form an invention, a professional process is needed from searching to creating a protection strategy, writing requirements, and pursuing the application. Even writing a scientific article is completely different from writing an invention description that is true to its nature but still has a wide scope of protection and keeps the core contents confidential.

Therefore, support centers need to accompany scientists by participating earlier in the research cycle, jointly identifying assets, evaluating the possibility of protection and choosing the time of publication, not just providing an administrative procedure.

Institutes and schools need to have a professional bridge department, capable of reading research, building protection strategies, and connecting experts and businesses. In other words, instead of turning every scientist into an intellectual property expert, build a system that is good enough for scientists to focus on doing what they do best.

- How do you evaluate the current connection between scientific research and intellectual property?

- This link has received more attention than before, but in many places it is still post-examination. That is, the topic is almost finished, the article has been prepared for publication before raising the issue of patent registration.

I think that for applied research directions, institutes and schools need to switch to the "IP by design" model - thinking about intellectual property and practical market problems that appear right from the research design stage. This change can start by incorporating intellectual property review into the scientific mission management process.

For scientists who want to turn research into intellectual property, I often share 3 things. First, think about intellectual property one step earlier than publication, waiting until the article is accepted is too late.

Second, think about the market one step ahead of intellectual property. The core issue is not whether the patent will be granted or not, but what the patent will be used for, and who has a big enough problem to be willing to pay for this solution.

And finally, don't try to go it alone. A good, fully packaged technology needs scientists, intellectual property experts, product development engineers, businesses, investors, and in many cases, standards and legal experts. Scientists don't need to be experts in all of those fields, but staying upstream requires knowing when to bring stakeholders on board.

"Where is the market?" is a big question that needs to be answered

- International patent registration is very expensive, how to balance the need for protection and the cost?

- Not all good inventions must be registered in the US, Europe or many countries. International patenting should be an investment decision.

First question, where is the market for the solution. If the product mainly serves the Vietnamese market, has no export plan, and does not have international investors or partners, you must carefully consider the reason for spending a large sum of money for protection in many countries.

Second, is that asset really strong enough and worthy of investment? Must search deeply and evaluate the novelty in relation to the world's technical status and scope of competition before investing in registration for protection.

Ultimately, who will exploit that right? If the business, investor, startup or strategy for developing a solution into a product has not been identified, it is necessary to consider each stage. Initially, you can invest in identification, searching and filing at a reasonable level, then continue to evaluate the level of interest of the market and business to decide whether to continue expanding internationally or not.

Good patent portfolio management is not only knowing how to register, but also identifying technologies that should not be pursued further.

- Having an invention means being able to bring research to market and commercialize it?

- The scientific, technical value and market value of an invention are different issues. Having a patent does not necessarily mean successful commercialization.

From my experience in patenting, in the early stages I am very happy when a solution is accepted, especially by international agencies like the USPTO, because it shows remarkable results in terms of science and intellectual property. Then we saw that there was still a huge gap between patent and market value, even though the invention solved a specific problem, closely related to practice and needs.

My PhD research is on biomimetic artificial muscles in robotics and human assistance, one of the main applications of this research direction is rehabilitation. After completing my doctorate abroad, I returned home and went to Cho Ray Hospital and Orthopedics Hospital to find practical problems in medical care and rehabilitation for Vietnamese patients. Very quickly, I got my first US patents in 2012, and many more followed.

In particular, I successfully registered US Patent 8935814 on patient transportation lifting equipment, in the context that lifting and transporting post-operative patients in Vietnam often uses human power, risking causing unnecessary impact or pain to the patient.

But when approaching businesses to present, some only want to trade existing products, do not want to invest in joint development and do not have an R&D team to jointly develop products from patents. I was also contacted by "patent hunting" units in the US and was willing to act as a focal point in commercialization, but due to problems in co-ownership and jurisdiction, the invention could not reach the market.

An invention may have scientific and technical value, but if a suitable solution cannot be found to develop into a product, it will still only remain on paper. From knowledge to intellectual property is one step, but from intellectual property to value for society and the market is the most difficult step.

This is also the reason I think that institutes and schools should not manage patents and intellectual property based on the number of applications. Instead, it is necessary to look at the entire life cycle of an intellectual asset from discovery to protection, portfolio management and transfer or commercialization.

Four links are still weak

- So what is the bottleneck from invention to market?

- I think there are at least four weak links.

First, many studies are still oriented towards understanding science and technology instead of meeting real market needs. It is often very easy for scientists to believe that the solution they have created is new because they have spent many years on it, but the market does not evaluate the effort but evaluates the results in relation to the technical state of the world, creativity and the possibility of industrial implementation. This is also the reason why it is necessary to look up, compare and even be willing to give up or change direction.

Second, there is a lack of risk-taking funding for the stages of trial production, prototyping, trial business and scale expansion. This can be considered a risky investment that researchers need to go from an idea to a prototype good enough for business evaluation.

Third, there is a lack of intermediary organizations professional enough to package technology, set prices and negotiate transactions. Businesses do not need a patent, but need technology that can be turned into products, customers, competitive advantage and profitability. The patent itself does not answer most of the business's concerns, such as whether the device has been tested, what standards it needs to meet, production costs, market potential.

Commercializing intellectual property is not about selling a patent, but rather a package of technology or technical solutions priced based on maturity, potential and risk.

This is also related to the fourth factor: the benefit and risk sharing mechanism is not attractive enough for businesses to boldly invest heavily in university research. I think the problem is not only the ratio of money divided, but also the ownership of the results, the right to make decisions, the degree of exclusivity, the plan to handle assets if the project fails, and the level of participation of the researcher after transfer. If these questions take six months or a year to resolve, the business opportunity may have passed.

The relationship between institutions and businesses should not have a single benefit sharing formula. It is possible to license the exploitation of results, to co-own, to sponsor research in exchange for exploitation rights, to co-develop or to spin-off. It is important that the rules are defined before the start, are transparent and flexible enough.

- How do you think cooperation between researchers, institutions and businesses should be built?

- The medical device field taught me a lesson: don't bring a patent to a business and ask them if they want to buy it, because the scope of interest of researchers, inventors and businesses can be very different. My approach changed from "transfer" to "co-development".

Businesses should not just be buyers at the end of the chain but should pose problems, seek appropriate expertise and participate right from the moment of formulating the research problem. Early partnering by businesses helps the solution cover key elements for commercialization, such as mass manufacturing capabilities, components, cost and relevant standards.

The mission of universities and researchers is to turn the actual production problem of the enterprise into a scientific and technological topic, and then from the research results together with the enterprise turn into intellectual property and products. Instead of spending investment and funding to create a lot of research results and then find ways to commercialize, design the path to commercialization from the beginning.

Final value only appears when knowledge solves a real problem and someone is willing to use, invest or pay for that solution.

Nam Nguyen