Patent Pending – Bridging the Gap Between Law and Science

by Dhvani Mehta

Graphic design by Emily Kate Tjan

In a culture where our minds are permanently settled into a tedious routine of planning ahead, the concept of “leave the future open” seems almost impractical. Breaking through this norm is Dr. Gabriella Chan. In addition to being a scientist and educator, Dr. Chan is also the founder of Yocto Law, a specialty firm that advises clients in the life and health science sectors.

That being said, there was a time when law was not a field of interest for Dr. Chan, let alone her future career. Dr. Chan began her post-secondary education at the Loyola University of Chicago, where she studied biology and art history. At this stage, she worked as a research assistant on a NIH-R01 study evaluating the quality of life of lung transplant patients. Despite initial plans to attend medical school, she learned that lung transplant recipients with cytomegalovirus (CMV) infections experienced poor outcomes, which sparked an interest in infectious diseases. This led her to pursue graduate studies at the Institute of Medical Science (IMS) wherein she focused on molecular diagnostics for infectious diseases under the supervision of Dr. Kevin Kain. 

Coincidently, half of Dr. Chan’s PhD was during the 2002-2004 outbreak of SARS-COV-1. As real time PCR was relatively new at the time, she worked with a German start-up to validate an assay to detect SARS-COV-1 as early as possible. She was subsequently involved in another start-up spun out of Dr. Kain’s laboratory, which focused on rapid point-of-care hand-held diagnostic devices for infectious diseases. It was at this time that the seeds of her interest in intellectual property (IP) law were first sown. Working with the start-up team, she participated in meetings with the company’s IP lawyers to prepare the first patents. It became quickly apparent that lawyers and scientists did not speak the same language nor viewed scientific research results through the same lens. In an evolving world of biotechnology and science-driven entrepreneurship, this apparent dilemma highlighted a need. Thus began Dr. Chan’s unforeseen journey into business law and IP. 

This shift from science to law might appear disparate and arduous. But in the end, Dr. Chan discovered that much like research, law was all about using critical thinking to piece a story together. Dissecting a case and applying it in an argument was not dissimilar from referencing various papers when writing a manuscript. Dr. Chan says: “There is nothing more valuable than the skills you foster through graduate education. They will apply to any path you choose. It teaches you a form of critical thinking that is lacking most of the time.” 

After training as a lawyer on Bay Street and working as Vice President of Legal Affairs at another Toronto-based nanotechnology start-up, she started her own law firm in 2014 which gave her the autonomy to pick her own clients. As the founder of Yocto Law, a boutique law practise focusing on individuals, start-ups, and businesses in the life and health science sectors, Dr. Chan acts as a mentor for several of her clients who are budding entrepreneurs. As they learn to operate and thrive in the world of business and IP, her guidance allows them to achieve conversational literacy in these domains and avoid common pitfalls. Through her insightful legal counsel, strengthened by her background as a scientist, she can both understand her client’s products from a scientific perspective, and provide knowledge in commercializing their innovations. 

Prior to launching her law practice, Dr. Chan returned to IMS to highlight the pervasive lack of understanding about IP she observed in founders of start-ups and spin-outs from academic institutions: “Students graduating from a world-renowned research institution such as U of T should have at least a conversational understanding of IP to be better prepared to function in a knowledge economy.” 

Dr. Gabriella Chan
PhD (Molecular Diagnostics for Infectious Diseases), JD.
Assistant Professor, Department of Laboratory Medicine & Pathobiology,
University of Toronto.
Founder of Yocto Law.

Photo provided by Dr. Chan

Dr. Chan believes that “Academia is a crucible of innovation and academics submit thousands of grant applications for taxpayer-funded research support in which they highlight the potential of their research to, either directly or indirectly, provide some societal benefit. At the same time, there is a persistent (although less pervasive) school of thought in academic circles which posits that the purity of academic scholarship ought not be tainted by the world of business, including IP and commercialization. While not every type or piece of research is innovative, graduate students and researchers alike should appreciate that, for ground-breaking research that generates inventions, fulfilling that promise of societal benefit entails the arduous next steps of protecting, translating, and hopefully commercializing those inventions.”

Dr. Chan states that “setting aside whether IP, translation, and commercialization ought to fall within or outside the realm of academia, publishing results of innovative research, or presenting them at conferences before being protected by at least a provisional patent application, can diminish or worse, evaporate, the commercial viability of that invention.

She adds: “Few inventions withstand the rigour of translation, and fewer still will be commercialized, but academics ought to be at least conversant in the language of IP and particularly appreciate the perils of premature disclosure to at least give those inventions a chance to provide that societal benefit first espoused in their applications for those taxpayer-funded grants.”

To that end, in 2014 she developed a series of modules in IP at IMS in which students learn how their professional and private lives are awash in IP, how to navigate it, translate it, and commercialize it. Her teaching philosophy is centred around application. Rather than reading about these principles from a textbook, students are presented with a case study centered around a research paper which acts as the stand-in for their invention, and work in groups to commercialize it. Along the way, students familiarize themselves with the IP policies of their institutions, form a mock company, select a corporate and product name, undertake steps to protect the IP, and chart a strategy for acquiring rights to use that IP from their respective institutions. The first module culminates with the students pitching the product to mock investors who are not scientists. This process aims to empower students to be prepared and educated when venturing down their career paths, wherever they may lead.

In all aspects of her career, Dr. Chan has been a mentor, whether it be with her legal clients or her students. Her devotion to bridge the gap between the scientific and corporate worlds has been consistent in her work, along with the desire to best prepare individuals for their future. 

With respect to what her future holds, her philosophy is: “Leave yourself open to new opportunities. Let life happen. It’s a journey. If you pin it on a destination, you may let important things pass you by.”