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 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.

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.