Feature

Making Research Pay

Researchers are becoming more aware of the commercial potential of their work, and are struggling with the implications.

By Cathryn Crane, NZSM

New Zealanders pride themselves on being an ingenious bunch. We have been able to do anything with a piece of No 8 wire and some sellotape. New Zealand products and processes are used worldwide, from kiwifruit to compost bins, from electronic petrol pumps to computer software. The problems come with protecting this inventiveness.

Dr John Walker, of Canterbury University's Plant and Microbial Sciences Department, is worried about New Zealand being exploited as a source of invention. He believes multinationals are keen to take advantage of research in small countries. They can buy it cheaply and bring it to commercial fruition elsewhere.

Fuelling this potential exploitation is the huge expense of commercialising research. New Zealand researchers and inventors may have great ideas, but few have the financial backing to bring them to market.

In Walker's case, millions of dollars would be needed to gain commercial benefit from his research. He and his colleagues have been extracting biologically active substances from native plants. Some of the extracts have been of interest to pharmaceutical companies. The companies, naturally, want patent protection if they are going to spend a fortune putting a new drug on the market.

Patent Problems

Companies often leave patents until they are very close to commercial production. This lengthens the period of protection and reduces the chance of information leaks. Various extensions of patent periods are available, but the standard patent in New Zealand covers 16 years. In those areas where long development phases are needed, it is therefore an advantage to file for a patent as late as possible.

In the drug area, the amount of basic research required to test a family of compounds is immense. The chances of finding a useful substance are very low --  Walker estimates that less than one in 10,000 makes it. Problems arise in trying to make the patent specific enough to provide protection, but broad enough to cover related compounds and new uses.

If one compound is useful, similar compounds in the same group may also prove useful to some extent. Some companies have held a patent on one substance, only to later find a related compound which is more effective and unprotected. By that time their competitors are usually hot on the trail.

Elspeth Buchanan, a patent attorney with P L Berry and Associates, has seen this happen. Another problem in the pharmaceutical area is in gaining patents for new uses of a drug. New Zealand law prohibits patents of methods of medical treatments. If an unexpected application is found, it is impossible to obtain a patent for that usage. This does not hold for the non-medical field, where new use patents are available. Buchanan is pleased to see that this and other restrictions in medical patenting are under review by the Ministry of Commerce.

The need to cover a large number of substances and potential usage means that the only people who really benefit from the law are the major international companies who have a lot of money behind them, Buchanan says. While this can be frustrating for the small-budget researcher, at least the ideas are being used, she adds, rather than being forgotten or treated merely as an academic curiosity.

Patents can provide useful protection at a reasonable price if people use them appropriately, according to Buchanan, but many people are not aware of the limits of patent protection. Patents are a commercial tool, rather than a blanket "hands-off" posting or a reward for a clever inventor, she says. There is the impression that the more patents you have, the better, but Buchanan says that this is usually unnecessary and overly expensive. In those cases where worldwide patents are required, the costs involved are a small fraction of the amount spent on market development and advertising.

Government Assistance

"[In New Zealand] it often comes back to government finances," Buchanan notes. "Few New Zealand companies are large enough to fund research."

Changes in government-funded research procedures have encouraged more awareness of marketing potentials. Walker admits that many scientists have been naive about their research. They have tended to focus on "interesting" problems and to ignore commercial possibilities. Both Walker and Buchanan have seen signs that this is changing.

Most universities now have commercial arms to benefit from the work of their academics and students. Massey University's New Technology Programme has supported a number of patentable discoveries. These have included local patents on computer applications and bee rearing equipment, and international patents on wine technology and soil conservation techniques.

At Massey, the patents are the property of the university itself. Other universities share patent rights with the staff or students involved.

Secrecy A Worry

Increasing emphasis on commercial returns and on contested funding has raised a number of concerns. At the heart of academic research is the desire to publish; at the heart of commerce is competitiveness and secrecy.

"The closing of results from other workers is against the principle of scientific openness," writes Darryl Macer in a DSIR report on issues in genetic engineering. Genetic engineering has been a major source of patents and arguments over intellectual property rights. In the United States, genetic engineering companies are awaiting rulings on over 7,000 patents, with a wait of 5-6 years before they are granted.

Researchers in commercial concerns are constrained to keep their findings secret until they have been protected.

Walker has been frustrated by this. Not only does he have to hunt out compounds that might prove useful, but his team has to find a structure that hasn't been reported before. An old listing in an obscure journal would eliminate even the most promising compound from commercial consideration. This has to be balanced with the pressure to publish felt by most academics. Buchanan has seen a number of potentially patentable discoveries "shot in the foot" by researchers being too eager to publish.

There are concerns that recent emphasis on commercialisation of research and research funding will cause major problems for the scientific community.

"It's good in moderation, but if you take it to extremes it's disastrous," avers Buchanan. "If there's no emphasis, a lot of good research is wasted. If there's too much, your research can go down immediately to trivial short-term objectives."

Many researchers find it difficult, if not impossible, to justify their projects on a commercial basis. Long-term research, or research in arcane fields, may never lead to a product or process to sell. Ironically, many research programmes have provided applications years down the track, or at a tangent to the original study.

One New Zealand scientist is a prime example of this. He had an interesting project, sitting in his lab shooting sub-atomic particles at gold foil. The results were fascinating, but had little commercial application. Or so thought Ernest Rutherford, sometimes called the father of nuclear physics...

Cathryn Crane is a freelance journalist with an interest in environmental issues.