Otago Patent Attorney Urges Innovators to Seek Early Advice

There is one great way to ruin the University’s Patent Attorney’s day – and that is for details of a research project to appear in the media when it could have had commercial potential.

It sounds harsh, but for Tomas Ribeiro it can be very disappointing, as it can often mean the difference between an idea becoming a product or service that could have helped people, and it sinking without a trace.

Why is it a problem? It is extremely unlikely that anyone will invest money into a product if details of it are freely available.

“Quite often people come to us with something that turns out not to be investable. That’s fine. Then we get talking about what else they are doing and we find something we can work with them on.”

“Some people think they are doing the right thing by putting their idea out in the public domain,” he says. “But if you want to be able to help people it’s quite possibly the worst thing you can do. It would be very difficult to find investors without strong IP rights. With no patent protection, anyone could develop it, so there would be little or no return from their investment. Publicly disclosing your idea before filing for patent protection makes it nearly impossible to gain strong IP rights,” said Ribeiro.

The solution? Bring ideas to Tomas and his team early: before they appear in a journal, before you present them at a conference, before you speak to a journalist.

He stresses that Otago Innovation Ltd understands the need for researchers to publish, but if they feel their idea might have commercial potential, it is worth talking to his team early.

“I’m more than happy to talk to anyone at any time about their idea.”

“Quite often people come to us with something that turns out not to be investable. That’s fine. Then we get talking about what else they are doing and we find something we can work with them on.”

Ribeiro has been at Otago for just over three years, beginning in April 2017, based out of Otago Innovation Ltd.

He holds a Master’s degree in Cellular and Molecular Biology and is a registered Trans-Tasman patent attorney.

He has been working in the field of Intellectual Property since 1999, beginning as a patent examiner at the Intellectual Property Office of New Zealand and then becoming Assistant Commissioner of Patents for the Ministry of Economic Development. He has worked in big and small pharma in England and Scotland and also worked for what became Scottish Enterprise, assessing investment opportunities for funding by the Scottish government. More recently, he worked in one of New Zealand’s largest Intellectual Property law firms in their Auckland office.

At Otago University, his role is to help assess and protect intellectual property developed by University employees and students, a role he says he loves.

“When I first came to Otago I expected there to be plenty of innovation coming from the Medical School, but I’m amazed at how much there is right across the University.”

“A normal day could see me performing a patent search to see if someone’s idea is new, meeting with researchers to discuss their ideas, working closely with Otago Innovation commercialisation managers on specific projects and working with external patent attorneys to draft and prosecute patent applications around the world.”

He also works closely with Research and Enterprise particularly with IP sections of grant applications.

“I really enjoy working with staff and students to get to what the essence of their idea is and seeing how best we can protect it. Being a judge on the annual Proof of Concept and Translational Research Grant competitions is a definite highlight.”

He is approachable and enthusiastic.

“I love it. I’m always very busy. I can’t believe all of the cool stuff that people here are working on.

“When I first came to Otago I expected there to be plenty of innovation coming from the Medical School, but I’m amazed at how much there is right across the University. We’re working with people from the Dental School, Physics, Biochemistry, Microbiology, Law, PE and more. It’s fantastic.”

Do you have an idea you think has commercial potential?

Contact Tomas early, with any idea. It’s free, and could make all the difference for the idea’s success.

Email: ipmanager@otagoinnovation.com

Photo of Otago’s Patent Attorney Tomas Ribeiro with US Patent No. US10,494,344, which was recently granted to the University. Photo credit: Sharron Bennett.

Story by Otago Bulletin Board Editor Lisa Dick