Procedure 29-1 - Invention and Technology Transfer

Date effective: 2011-09-19

Authorized by: Administrative Committee

INVENTION AND TECHNOLOGY TRANSFER

Purpose:

1. The purpose of this procedure is to establish a process and conditions relating to the disclosure and assignment of Inventions, the evaluation of the patentability of an Invention, the development of commercialization options for, and the commercialization of, an Invention well as the distribution of Net Revenue(s) received in respect of the commercialization.

Definitions:

2. For the purpose of this procedure:

a) “APUO” means the Association of Professors of the University of Ottawa;
(b) “Equity” means any and all equity, stock, option and/or warrants; and
(c) “Patent Committeemeansthe committee established in accordance with the APUO Collective Agreement.

3. All other capitalized terms in this procedure shall be as defined in the Policy.

4. University Personnel shall be provided with a copy of the Policy and its procedures or directed to the Policy and its procedures on the University website upon their engagement by the University. Upon being so informed, University Personnel shall acknowledge to the University that they have been informed of the existence of the Policy and its procedures. Disclosure and Review of Invention(s):

5. University Personnel shall complete an Invention Disclosure Form using the form set out in Appendix 1.  If University Personnel have any questions concerning the Invention Disclosure Form, they should contact the Office of the Vice President, Research.

6. Upon receipt of the Invention Disclosure Form, the Office of the Vice President, Research will review the information in the form to determine whether the disclosed work of the University Personnel is patentable or can be commercialized.  If the University Personnel is a member of the APUO, the Office of the Vice President will consult with the Patent Committee during the review period.

7. In determining whether work is an Invention and can be patentable, the following factors, without limitation, will be taken into consideration by the Office of the Vice President, Research: 

(a) the novelty, utility and obviousness of the idea;
(b) existing/related patents;
(c) potential freedom to operate;
(d) cost of patents; and
(e) availability of institutional patent funds and access to external patent funds.

8. In determining whether an Invention can be commercialized, whether or not patentable, the following factors, without limitation, will be taken into consideration by the Office of the Vice President, Research: 

(a) potential market for Invention;
(b) commercial/business opportunity;
(c) development time and cost;
(d) availability of development funding;
(e) commercialization strategy; and
(f) interest of inventor(s) and/or potential partners in commercialization.

9. The Invention review process may include third party experts who will be utilized only under conditions of confidentiality.

Rights in Invention(s) and Assignment

10. The University shall only grant any rights in Invention(s) to industrial or technology commercialization partners on the basis that the University receives, as a minimum, a fully paid-up, royalty-free, perpetual, non-exclusive right to use the Invention(s) internally or with the University’s affiliated research hospitals for non-commercial research, educational and clinical purposes.

11. In the event that the Inventor is a member of the APUO, the University will assign its rights in and to the Invention in accordance with the APUO Collective Agreement at the time of the assignment.

12. Where the University decides not to patent the Invention(s), the University will assign its rights in and to the Invention(s) to the Inventor(s) in return for an agreement in which the University shall retain a fully-paid up, royalty-free, perpetual and non-exclusive right to use the Invention(s) internally or with the University’s affiliated research hospitals for non-commercial research, educational and clinical purposes and the receipt of Net Revenue(s), on an annual basis, as negotiated by the University with the Inventor.

13. If the Invention(s) is made or developed under an agreement with a sponsor, the rights with respect to the Invention are subject to the applicable provisions of such agreement.  In any such agreement, the University will endeavour to retain a royalty-free right to use the Invention(s) internally for non-commercial research, educational and clinical purposes.

Commercialization of an Invention:

14. The University shall seek the most effective form of commercialization of the Invention(s).

15. The types of commercialization that may be considered by the University, include, but are not limited to the following:

(a) entering into a license agreement with an existing company;
(b) developing a new venture to exploit the Invention;
(c) bundling the intellectual property with other sources of intellectual property to develop a more attractive commercial opportunity;
(d) marketing the intellectual property through third party intellectual property agents.

16. With respect to a license agreement, the University will endeavour to enter into an agreement that is competitive with industry norms whenever possible.  Payment under the license agreement may be received in the form of licensing fees or royalties. 

17. With respect to new ventures, the University will assist Inventor(s) in assessing financial, business and economic development assistance in the establishment of the new venture. 

18. Whenever possible, the University shall promote access by an Invention to proof-of–principle funding (from internal and/or external sources) in an effort to decrease the commercial risk(s) associated with technology development of the Invention(s).

19. In recognition of the importance of an entrepreneurial culture in the success of new ventures, the University, to the extent possible, will promote University Personnel involvement in case competitions and entrepreneurship support programs.

20. Any licensing or commercial exploitation agreement shall contain a provision that the licensee will indemnity and save harmless the University against any and all claims, demands, liabilities and costs of whatever nature or kind arising out of, in connection with, or resulting from these agreements.

21. In the case where the University has been asked by an Inventor to commercialize the Invention(s), the University may undertake the filing of a patent application, patent prosecution and other exploitation, development and marketing activities for the Invention(s).

Distribution of Net Revenue(s)

22. In the event that the University receives Equity in a new venture created to commercialize the Invention(s), the University as compensation for licensing or assigning such Invention to the new venture, such Equity shall be shared with the Inventors in accordance the formulae set out in Section 8 of the Policy or as otherwise determined by the University and based on the evaluation of that Equity at the time it is received by the University.

23. All Net Revenue(s) shall be distributed within ninety (90) days of the end of each fiscal year of the University.

24. The annual report on commercialization activities shall include an accounting of revenues and expenses related to each Invention(s).

Affiliated Hospitals and Research Institutes

25. In cases where Inventions are jointly developed by employees of an affiliated hospital or of an affiliated institute with the University and University Personnel, the University will negotiate the ownership of the Invention with such affiliated hospital or affiliated institute on a case-by-case basis.  The University will seek to negotiate with the affiliated hospital or institute a shared responsibility for the commercialization of the Invention and reporting.

26. The sharing, if any, of Net Revenue(s) between the University and the affiliated hospital or institute of the University shall be negotiated on a case-by-case basis and will be determined on the basis of the contribution of each party to the research program from which the Invention(s) arose.

27. The University shall request that the affiliated hospital or institute of the University shall provide quarterly statements on any Net Revenue(s) received by the affiliated hospital or institute from the Invention(s).

Role and Responsibilities of Office of the Vice President, Research:

28. The office of the Vice-President, Research shall be responsible for:

(a) implementing this procedure;
(b) reporting on the outcomes and impact of technology transfer and commercialization activities; and
(c) recommending changes to this procedure to the Administrative Committee, as required.

Exception:

29. No exception shall be made to this procedure without the prior written consent of the Administrative Committee.

Revised: May 11, 2011

(Office of the Vice-President, Research)

Appendix 1 - INVENTION DISCLOSURE FORM (DOC)

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