TRP course instructor and Yocto Law founder Gabriella Chan brought UofT scientists’ IP knowledge    

Gabriella Chan saw a gap in scientists’ knowledge on intellectual property (IP) rights. She wanted them to understand their legal obligations and to play a role in how they choose to expose their rights to commercialize their scientific breakthroughs. To …

Written by: Nida Zafar

Edited by: Paige Gilbank

While practicing law, Gabriella Chan saw a gap in scientists’ knowledge and understanding of Intellectual Property (IP). She wanted them to understand their Intellectual Property (IP) rights and legal obligations so that they would be better positioned to appreciate the appropriate commercialization path of their scientific breakthroughs.

“In a university that spins out start-ups on a daily basis, it seemed [essential] to me that the trainees founding/co-founding these entities have a grasp of what IP is and the associated rights and obligation of IP ownership,” Chan said in an emailed interview.

To address this problem, Chan approached the Institute of Medical Sciences (IMS) with a proposal to teach IP to scientists and students in the U of T’s Faculty of Medicine.

In 2013, the IMS Curriculum Committee approved her proposal to teach two modules: Fundamentals of IP and Applied IP. The first module focused on the basics of IP; “the rights and obligations of the inventor and how these rights can lead to beneficial outcomes of translation and commercialization,” said Chan. The second module “introduced students to basic contractual concepts and examines the content and terms of a variety of agreements that impact IP rights including licensing, consulting, employment, non-disclosure, and sponsored research agreements”.

Chan co-taught the first modules in the IMS in fall of 2014 and spring of 2015 with TRP Director Dr. Joseph Ferenbok. Once the Translational Research Program (TRP) was launched within the IMS in 2015 Chan continued to teach the IP modules as part of the TRP module offerings. The academic and professional backgrounds of students enrolled in the modules are varied, but consistently few of them have had prior exposure to IP so students begin the modules on a relatively equal footing.

“Healthcare innovation cannot be successful without a sound understanding of intellectual property. The lessons learned from this module made me more confident in my ability to pursue my innovation goals,” said TRP student Catherine Virelli, who took the Fundamentals of IP and Applied IP modules this year.

Chan acknowledges the obvious: IP can be an undoubtedly dry subject to teach and learn. To make it more engaging, she makes it interactive through the use of case studies. After students are split into groups, they are “assigned an academic paper which serves as the basis of their invention…[they] have to walk a realistic path to determine how they would protect and commercialize their invention,” she said.

In 2017, Chan developed a third module to introduce students to the other key pillars of translation and commercialization: privacy, procurement, and regulatory affairs. The module addresses specific considerations in the fields of pharmaceuticals, medical devices, and clinical trials. Chan invites guest speakers with hands-on working experience in each of these areas to give the students a real-word perspective on these topics.

In addition to teaching at TRP, Gabriella founded and runs the boutique law firm Yocto Law. Her practice assists life science and health technology companies with their daily legal needs. She has a PhD in molecular diagnostics for infectious diseases which, she says, makes her bilingual in speaking science and legalese. It allows Chan to minimize the time it takes to understand her clients’ business and maximize her time on advising them on their legal needs.

Her interest in infectious diseases developed during her time as an undergraduate. She worked on a lung transplant recipient quality of life study at the Loyola University Medical Centre in Maywood (Chicago) Illinois. Chan continued her studies at the IMS, obtaining her PhD in diagnostics for infectious diseases, particularly malaria and SARS CoV.

She worked with Dr. Tony Mazzulli and his team at Mount Sinai Hospital to figure out what organs the SARS virus resided in, Chan said. “This required extracting and amplifying the virus…from organ samples collected during post-mortem examinations of each of the 41 individuals who succumbed to SARS outbreak.”

Chan said she found the process exhilarating, and “a lesson in the importance and need of rapid, sensitive, and specific diagnostic tests and the imperative of an effective public health emergency response.”

Now that Chan has returned to the University of Toronto in a teaching capacity, she says: “My greatest joy is hearing from former students how helpful they have found their newly gained IP knowledge as they seek to secure jobs after graduation.”