A Guide to Protecting Intellectual Property
This Guide has been prepared by the Canadian University IP Group as a means to provide the Canadian University community with information on matters pertaining to IP.
The Canadian University IP Group is a group comprising the representatives of IP/Business Development Offices at the following Canadian universities: Alberta, British Columbia, Laval, McGill, McMaster, Montréal, Queen's, Toronto, Waterloo, and Western.
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Intellectual Property (IP) simply defined is any form of knowledge or expression created with one's intellect. It includes such things as inventions, computer software, trademarks, literary, artistic musical or visual works and even simply know-how.
Inventions may be protected by Patent and Registered Industrial Design. Software, literary, artistic and musical works may be protected by Copyright. The initial ownership of IP, in most cases, resides with the creator of that IP but in many cases rights are assigned to the university. Policies with respect to IP vary at different institutions and all readers are encouraged to review the policy of his/her institution relating to ownership, obligation to disclose, sharing proceeds from commercialization and conflicts of interest. Traditionally universities in North America have allowed their faculty members to retain their Copyright in literary, artistic and musical works.
Most inventions and software created at Canadian universities are based on research primarily sponsored by some form of government funding. There is, therefore some onus on those who own that IP to make efforts to ensure it is utilized for the benefit of the public at large. That, in most cases, requires protection and commercialization through, if possible, a Canadian based firm. IP Management Offices have been established at most research intensive universities to provide advice and services to the university community to facilitate the protection and commercialization of IP.
The economic and social value of inventions and software generated from university research has clearly been demonstrated. Most of the major discoveries giving rise to the birth and growth of lasers, semi-conductors, super-conductors, computers and biotechnology have come from university research. As Canadians we must learn to capitalize on the knowledge which is created within our university and hospital communities if we are to be competitive in years ahead. For this to happen, researchers and administrators must be aware of the importance of inventions and software, what should be done to protect these types of IP and how it can best be exploited to benefit the Canadian public.
What is a Patent?
A Patent is a right granted by a national government, upon application, and in exchange for a complete disclosure of an invention. The disclosure is initially a confidential disclosure to the patent office which later becomes a non-confidential disclosure to the public at large. A patent grants to the applicant the exclusive right to make, use or sell the claimed invention for a limited period of time Patents generally have a life, subject to the payment of the prescribed annual fees, of 17 to 20 years depending on the jurisdiction. In Canada, patents have a lifetime of 20 years from the date of issuance.
[Further information on patent law in Canada can be found on the Canadian IP Office (CIPO) website.]
What is Patentable?
By law, in order to be patentable, an invention must be novel, and it must have utility. Over the years a third criterion has emerged: that the invention is not obvious to a person skilled in the field of the invention. It is this criterion upon which many inventions founder.
Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these, such as new uses of known compounds, are patentable subject matter. Novel, genetically engineered life-forms and new microbial life-forms can be patented in some jurisdictions, such as the United States, but not in others (the Canadian position is still unclear). Methods of medical treatment are also patentable in some jurisdictions, such as the United States, but not in others, including Canada. Scientific theorems or principles, methods of doing business or of playing games, as well as anything which is illegal or illicit, are not patentable.
Provided software can meet the usual criteria for patentability, it can be patented in some jurisdictions. In practice, however, it is almost impossible to meet the novelty requirement, and software patents are very few and far between. The preferred form of protection for software is by copyright.
New plant varieties can be protected by way of Plant Breeders' Rights in Canada or a Plant Patent in the United States. Some other jurisdictions, but by no means all, have equivalent legislation.
Integrated Circuit Designs can be protected in the United States under the Maskworks Protection Act. Canada has the Integrated Circuit Topography Act. Other countries are considering similar legislation.
How Does the Foreign System Work?
Patents do not cross national boundaries and, at present, there is no such thing as an International Patent. Harmonization of international patent laws is progressing rapidly but at the moment each country grants its own patents based on its own standards. The Paris Convention Treaty of 1883 facilitated filing of applications in all member nations. It states that if a patent is filed in one member nation, and other applications are filed in the other member states within one year of the first application, all such applications will be accorded the filing date of the first application.
This is very important when considering the effect of publication in a scientific or other journal on a foreign patent application. Almost all industrialized countries are signatories to the Paris Convention.
The European Patent Office makes it possible to file a single application (in English, French or German) to protect one's rights simultaneously in up to 40 European member countries. A single regional patent is granted but is not effective until it is ratified in each of the National Patent Offices selected by the applicant, who also must pay the appropriate National Fees, translate into the national language, and meet specific national requirements as to form, among other matters.
In our global economy, it is usually advisable to initiate steps to protect foreign patent rights before commercialization is contemplated or completed. The Patent Cooperation Treaty (PCT), to which Canada acceded in 1989, offers a relatively inexpensive mechanism for initiating foreign patent protection rights by deferring some of the major patent expenses (such as foreign translation costs) for up to 30 months from the initial patent filing.
An invention can be protected by patent only if it is novel (that is, no prior publication of the invention has been made by the inventor or others). Most developed countries follow a policy of absolute novelty; that is, no patent can be obtained if the invention has been publicly disclosed in any manner, anywhere in the world.
Grace Period and Disclosure
Canada and the U.S.A., however, provide a grace period of one year from publication, during which the inventor can file a patent application, provided the disclosure was made by the inventor or someone who obtained the information from the inventor. Few other countries are as generous to inventors, and it is essential, therefore, not to disclose the invention to anyone, until a formal patent application has been filed. Disclosure can however be made on a confidential or proprietary basis, and such disclosure will not affect the ability to patent.
What is Public Disclosure?
The relationship between the parties determines whether the disclosure is public or made in confidence. The disclosure is legally confidential if, when receiving the information, the receiving party personally understands and accepts a duty to keep the information strictly confidential. A disclosure to an academic colleague may or may not be considered confidential depending on the understanding between the parties.
Any printed publication in a newspaper, scientific journal or other written form available on an unrestricted basis is considered a public disclosure, as is an oral presentation at a public meeting. Any rights to subsequent patent protection, except in the United States, are lost under these circumstances.
Please note that published pre-prints or abstracts of (a) papers for a scientific meeting or (b) degree theses are also considered public disclosures.
What Constitutes Disclosure?
A public disclosure, written or oral, can be used as prior art by an Examiner evaluating a patent application if enough of the invention is disclosed to enable a person skilled in the relevant field to put the invention into practice. Such disclosure can also be used in courts to invalidate an issued patent. In some countries, experimental use of the invention in public will count against patentability.
It is advisable to disclose an invention to your institution's IP Office before the details of the invention are included in any grant application. Disclosure to the IP Office does not invalidate the patentability of an invention and is held to be confidential. Although disclosure in a grant application does not represent public disclosure in Canada, reviewers will be exposed to the invention and potentially represent an unnecessary threat. In the United States, grant applications may be considered public documents under Federal Freedom of Information legislation.
Copyright is the exclusive right of the creator, or subsequent copyright holder, to reproduce a work. Copyright exists as soon as an artistic, literary or musical work or software is created. Registration at the Copyright Office is purely voluntary; not doing so will not affect the validity of the copyright. It is advisable, however, to put the public on notice that the creator is claiming copyright by marking all copies of the work with a Copyright Notice.
Registration of a Copyright facilitates the Copyright holder's rights in the event of a legal dispute.
Copyright protection in Canada lasts for the life of the author plus fifty (50) years. Copyright extends to other countries by virtue of treaties such as the Berne Convention and Universal Copyright Convention and the term in other countries depends on the national law.
A researcher's know-how can often have considerable value. While it is mandatory in filing a patent application to disclose sufficient information to enable others to reduce the invention to practice, the researcher will often also possess valuable confidential know-how and experience to permit commercial optimization of a process or product. Know-how can in fact be licensed independently and a know-how license need not be restricted to the term of the related patent.
Confidential information and know-how should, therefore, be clearly defined and disclosures should be covered by a written contract.
Confidentiality Agreements and Biological Material Transfer Agreements
An invention may be disclosed prior to filing a patent application, provided it is covered by a Confidentiality Agreement between the inventor and the person to whom the invention is disclosed. Such agreements provide evidence of the receiving party's understanding of the confidential nature of the information and expresses in written form its obligation to keep the information in confidence.
These are simple agreements and can be obtained from your institution's IP Management Office.
Biological Materials can be used to develop modified or derivative products from the original materials. It is important to control the use of transferred biological materials and standard agreements are now being used by most institutions in North America. Please consult your institution's IP Management Office before you transfer any biological material to any academic or industrial collaborator/researcher.
When Should I Disclose?
Almost every country in the world, including Canada but excluding the United States, operates under a "first-to-file" patent system. This means that when two or more applications for a patent for the same invention are filed, the patent will be granted to the first applicant.
The United States operates on a "first-to-invent" system, meaning that the patent is granted to the person able to prove the earliest date of invention, regardless of the date of filing of the patent application. However, an acceptable date of invention can only be established for (a) work done in the United States or (b) the date of introduction of the invention into the United States if the work is done outside of the United States.
The North American Free Trade Agreement (NAFTA) of 1 January 1994, permits Canadian and Mexican inventors to establish a date of invention based on work done in either Canada or Mexico, subsequent to 1 January 1994. If the invention date is prior to 1 January 1994 the former rules apply. It is important therefore that you discuss your invention with your IP Management Office as early as possible and certainly before any publication, including abstracts, has taken place.
How do I make an Invention Disclosure?
Contact your institution's IP Management Office to report that an invention has been made. Most universities have established procedures, and usually forms, to assist you with your disclosure. Although each university may have a different policy or guidelines, the overall approach is very similar.
[Submit your confidential Report of Invention to WORLDiscoveries®.]
The basic objective is to help you protect your invention and to explore with you any opportunities for commercialization.
An inventor is a person who has had an original idea or has contributed intellectual input to one of the main claims of the patent. A patent application may be filed naming one or more inventors.
A person who works under the direction of another and does not contribute any original thought to the claimed invention; for example, "works as a technician" to confirm an invention, cannot and must not be named as an inventor. This type of relationship should be delineated clearly in writing before research or development work is undertaken relative to the project or activity.
Professional collaborators may or may not contribute to the inventive concept being claimed and great care should be taken in deciding who should be named as an inventor. It is important to understand that inventorship is a legal matter, not a collegial matter -- not all co-authors of a publication are necessarily co-inventors. Collaborators not deemed to be co-inventors can however be recognized through some sharing of the net proceeds of the invention. If in doubt as to inventorship, your IP Management Office should be consulted and a professional opinion obtained.
What Searching Should be Done?
An extensive literature search should, obviously, be done before any research project is undertaken. Once an invention has been made, you should update your literature search and, if available, supplement it with a review of the patent literature. All available literature should be drawn to the attention of the IP Management Office. The IP Management Office will, if appropriate, arrange for a detailed patent search, usually in the United States Patent Office.
The Commercialization Process
Before an Institution's IP Management Office devotes considerable resources to protecting and exploiting an invention, you will most likely be asked to assign your invention to the Institution or its designate. In many cases, University policy states that inventions are assigned to the University upon disclosure, with appropriate revenue sharing provisions. An assignment is a legal document or process which transfers your IP to the institution, and it is recorded in the Patent Office.
Depending on your institution's policy, the IP Management Office may bear the initial cost of protecting and commercializing your invention. If it is successful in generating income, the first charge on that income is reimbursement of those costs. Thereafter, income will be divided between the Institution and the inventors. Your return as inventor will depend on your institution's IP Policy. Normally, you can expect anywhere from 25 to 50% of the net proceeds.
In the event that more than one inventor is involved, or other persons may be involved in sharing revenue, an agreement should be made among the interested parties and lodged with the IP Management Office at the outset to formalize how the inventor(s) will share their proceeds. As well, there is no reason why an inventor cannot allocate a portion of his/her individual proceeds to someone who has contributed to the development of the invention but who is not formally considered an inventor.
The IP Management Office will have a number of possible ways to attempt commercialization of the invention. If suitable, the invention may be used to facilitate the formation of a new company to develop the technology. If the invention is not suitable for new venture creation, a licensee(s) may be sought to commercialize the invention under license. Licenses can be arranged in a variety of ways but almost all will include some form of continuing royalty.
The inventor plays a critical role in commercializing his or her invention. He or she will usually be relied upon to participate in scientific discussions with potential commercial partners and, on occasion, may be actively involved in negotiating a particular agreement. Participation by an inventor, however, will always be subject to the policy of each Institution.