Technology Management and the University of Alberta

How does UAlberta define “invention” in the UAlberta patent policy?
UAlberta uses the term “Patentable Intellectual Property” (PIP) to refer to inventions. Patentable Intellectual Property includes patents and patentable ideas that can be legally protected by patent in Canada or elsewhere. To be potentially patentable, PIP should be new, useful and not obvious. For more detail, please refer to the Patent Policy.

Who does the UAlberta Patent Policy cover?
The Patent Policy covers all members of the UAlberta community including faculty, researchers, staff and students.

Who owns PIP that UAlberta personnel creates?
The persons or person (UAlberta personnel within their research areas) who creates PIP owns it, unless there is a specific written UAlberta or research agreement to the contrary. The patent policy also gives both the inventor and the UAlberta certain rights.

I invented something I want to commercialize. When do I disclose this to UAlberta?
If you decide you want to commercialize, patent, sell, or license some of your PIP, the Patent Policy stipulates you must disclose this invention to UAlberta.
It is best to do this as soon as possible. Early disclosure allows time to determine ownership and assess patentability. You should disclose as soon as the invention or work is clearly conceptualized and you have obtained supporting data. To obtain the strongest IP protection for your discovery, you must disclose before you publish or initiate any action to sell, license or assign your PIP to someone else.

How do I disclose my invention to UAlberta?
You complete a Report of Invention (ROI) form and submit it to TEC Edmonton. Inventors can indicate on this form his or her decision to either commercialize independently or assign the invention to UAlberta.

I am collaborating with a researcher from another institution. Where do we disclose?
You will disclose to both institutions. UAlberta inventors complete the UAlberta Report of Invention disclosure form and submit it to TEC Edmonton.

What does it mean to assign an invention to UAlberta?
Assigning an invention to UAlberta means transferring ownership to the UAlberta. In this instance, the inventor undertakes the commercialization process through UAlberta using TEC Edmonton’s resources. Once TEC Edmonton receives the ROI, TEC reviews the invention for patentability and commercial potential and responds with initial comment or questions within 30 business days.
From there, TEC develops a commercialization strategy, dependent on the IP potential and market opportunity. A strategy may include filing a provisional patent application, identifying and approaching potential partners and negotiating any necessary legal agreements with those partners. In some cases, the strategy may include waiting for additional data prior to proceeding or the technology may be returned to the inventors due to IP or commercial barriers.
If TEC Edmonton initiates the intellectual property filing process for the invention (patents, copyright, etc. as appropriate), TEC pays the cost to file a first patent application.

Who receives revenues from an invention that TEC Edmonton commercialized?
Generally speaking, net revenues (as defined in Section 9 of the Patent Policy) are split three ways: 1/3 to the inventor, 1/3 to UAlberta and 1/3 to TEC Edmonton to help cover commercialization process costs.

What if an industry partner created or funded my invention?
On the Report of Invention disclosure form, the inventor must indicate industry partner support or participation. TEC Edmonton will review the invention disclosure form in the context of relevant contractual or agreement obligations with other partners. Some funding programs require that intellectual property resulting from a funded project be assigned to the industry partner.

Do all inventions need a patent?
No, not all inventions require patent protection for commercialization. Some may not meet patent protection criteria. If TEC Edmonton accepts an invention into its commercialization portfolio, it works with the inventor to develop the most suitable protection strategy.

Should an inventor file a patent application before approaching potential partners?
Not necessarily, but it’s recommended to have a confidentiality agreement with the potential partner prior to sharing any invention details. TEC Edmonton handles all confidentiality agreements regarding research and commercialization for UAlberta. TEC will work with you to develop an appropriate IP protection strategy, provided IP has been assigned to UAlberta.

Who pays for the patenting process?
If the inventor commercializes on his or her own, he or she is responsible for all patenting expenses.
If TEC Edmonton handles the commercialization, it covers the cost to file a first patent application with the expectation of cost recovery from future revenues (see Question 3).

Can I still publish my work if I report an invention?
Yes, however any public disclosure, such as presentation or publication, may limit the inventor’s ability to properly protect future intellectual property. A Report of Invention form should be completed well in advance of any publication or presentation so TEC Edmonton has time to evaluate and protect your intellectual property.

I have already disclosed my invention publicly. Is it too late to protect it?
Not necessarily. Some countries offer grace periods that allow an inventor to patent an invention after he or she publishes. Please contact TEC Edmonton as soon as possible if you believe your invention has commercial value and you would like to pursue it.

What does it mean to commercialize independently?
If an inventor decides to commercialize independently, the inventor retains intellectual property ownership and takes responsibility for the intellectual property filing process (patents, copyright, etc. as appropriate), developing a commercialization strategy, negotiating legal agreements with potential partners and paying associated costs. The inventor is responsible for meeting any pre-existing obligations to the research sponsor.

If the inventor commercializes independently, are there still obligations to the University?
Yes. First, the invention must still be disclosed to UAlberta by submitting a Report of Invention form.
Second, an inventor who commercializes independently is still required to fulfill any existing obligations to third parties (for example, rights granted through a research agreement).
Third, researchers must share one third of net revenues with UAlberta, in accordance with the Patent Policy. The inventors(s) must submit to UAlberta, through TEC Edmonton, an annual report of activities along with UAlberta’s share of net revenue.
Finally, in accordance with UAlberta’s conflict of interest rules, the inventor(s) must seek approval from UAlberta for the first time the invention is sold, licensed or assigned to another party and also for any subsequent sale, licensing or assignment of the invention to another party that is not arm’s length to the inventor(s).

How does UAlberta support researcher-created spin-off companies?
TEC Edmonton has established startup-friendly deal structures for its spin-off companies. Researchers interested in company creation can refer to TEC’s “Introduction to UAlberta spin-offs” document for additional information and/or contact TEC Edmonton to discuss.

TEC Edmonton offers services to UAlberta spin offs in their early stages through a variety of programs, including market and business planning expertise, financing assistance, third-party negotiations, regulatory guidance and early-stage operations.

While no two spin-off company situations are the same, TEC Edmonton follows a set of defined principles in structuring a spin-off company deal. These principles help ensure alignment between commercialization partners and increase the likelihood of commercialization success. UAlberta’s Conflict of Interest and Patent Policies are also relevant to creating spin-off companies.

Can students be inventors and file an invention disclosure?
Students are often inventors and are included on the Report of Invention form. Once students are listed as inventors, they must also sign the disclosure form to complete the submission process. For a summary on who should be listed as inventors, please refer to page 2 of the Report of Invention form.

What about commercializing IP associated with software development?
UAlberta inventors routinely undertake commercialization of this type of intellectual property. Contact TEC Edmonton for guidance on IP strategies for software, including the potential impact of the use of open-source code.

How is does UAlberta determine copyright ownership?
A copyright protects the expression of an idea – i.e. a specific book, script, piece of art or software program. University Copyright Regulations cover copyright ownership in works that UAlberta researchers create. Generally, the academic staff member owns the copyright in any work s/he produces, unless UAlberta engaged that staff member to prepare such works or if preparing such works is a part of that staff member’s normal responsibilities. If the works arise from research at UAlberta, the copyright then lies with the creator/author.

For more information, see section 10 and Appendix B (the “Copyright Regulations”) in the academic staff agreements.

The University considers its students to be the sole possessors of their thesis copyrights. For more information, see section 10.4 of the Graduate Program Manual.