A patentable invention is a device, manufacturable article, machine, composition of matter (e.g. chemical, mixture, alloy), process (technological method), or new use of or improvement to an existing invention which encompasses all of the following three characteristics: (1) useful, (2) non-obvious, and (3) novel. The strongest and most enforceable patents are composition of matter patents. Once the Invention Disclosure Form is submitted to ISS, we will undertake a patentability review of your invention, taking into account these three features.
If you believe your invention or discovery has commercial value, it is advantageous to disclose the technology to ISS for review and possible filing of a patent application well in advance of any "public" disclosure of the invention (e.g. abstracts, papers, thesis dissertations, informal communications, public seminars). If public disclosure occurs prior to filing a patent application, valuable patent rights may be lost. Disclosure of the invention to ISS should be far enough in advance of public disclosure to permit an adequate review and development of a thorough patent application and commercialization strategy (90 days or more is desirable).
It is important to keep thorough records in the form of lab notebooks that record your ideas and experiments and note independent witnesses to successful results. All license and other agreements should be executed by ISS. A Non-Disclosure Agreement (NDA) is necessary when providing proprietary information to a third party. A Materials Transfer Agreement (MTA) is required when sending your proprietary samples (e.g. biological materials) to a third party, thereby helping to protect the intellectual property. If the invention is developed as a part of a student's thesis, any presentations relating to the thesis (e.g. thesis defense, departmental presentations or seminars) should be maintained confidential. ISS in conjunction with the Faculty of Graduate and Postdoctoral Studies has developed a process that does not infringe on the academic review process.
An "inventor" is a term strictly defined by patent law where it represents an individual who first invents patentable subject matter, who contributes to the conception of the invention or to any of its component inventive steps. There may be several "co-inventors" who made larger or smaller inventive contributions. "Conception" is the formation in the mind of the inventor of a definite idea of the complete invention as it is to be practiced. Co-authors on publications or technical research staff may or may not be considered by law to be co-inventors. It is very important to define inventorship of an invention accurately; otherwise the patent may be invalid. In theory, a departmental colleague who provides a crucial insight or inventive step over coffee could be a legal inventor without being closely involved with the research project that led to the invention.
If the ISS decides not to patent an invention, the decision is likely based on sound commercial factors. In such an instance, according to uOttawa policy, if ISS declines to patent an invention within 6 months from the date that the formal uOttawa invention disclosure is received, then the inventors may request that the intellectual property rights for the invention – as it was described in the original invention disclosure – be returned to them. If the invention is disclosed to the ISS informally, without the completion of a formal invention disclosure form, this policy may not apply. It is important to note that ISS may recommend a commercialization strategy that will involve active marketing of the invention, but not the filing of a patent application within the first 6 months of the submission of the invention disclosure.
A patent, if issued, is a commercial tool that provides the owner with the right to exclude others from practicing the patented invention. Patents are expensive to obtain and maintain and can be difficult to enforce. The decision on whether or not to file a patent application is strictly a business decision based primarily on the likelihood of obtaining commercially useful protection for the invention and of earning revenues from the eventual commercial exploitation of the invention. Patenting funds are limited and the University must allocate these resources to the most promising opportunities.
Some of the factors which need to be taken into consideration in deciding whether or not to file a patent application are: (1) Is the invention patentable and would a patent be readily enforceable? (2) Is there a market for the invention and is that market large enough to generate revenues to cover patenting costs for the University and more? (3) For what aspects of the invention can patent coverage be obtained and how broad can this coverage be? (4) What is the competitive landscape and what advantage does the invention have over competing solutions?
The University of Ottawa has one of the most inventor-friendly royalty distribution policies among Canadian or U.S. universities. Following recovery of patent and direct marketing expenses, royalty revenue is shared based on the following schedule, as set forth in uOttawa policy and the APUO Collective Agreement.
Up to $100,000:
80% to the inventor(s)
20% to uOttawa
50% to the inventor(s)
50% to uOttawa
If an affiliated hospital is a co-owner of the invention, some adjustment of the revenue sharing may be required in order to conform with both university and hospital policies.
ISS and the inventors may evaluate the overall strength and potential of an invention (or combination of inventions) as the basis for a start-up company that could attract investment. ISS staff are "start-up oriented" and have the experience and ability to actively and comprehensively facilitate the start-up process, including business plan development, procurement of investment and recruitment of management. This proactive assistance is intended to permit a researcher to continue academic pursuits while experiencing the potential rewards of equity ownership with or without management responsibilities.
According to uOttawa policy, copyright works such as software developed at uOttawa belongs to the creators. The creators may elect to commercialize it independently, although they can always consult ISS for information or advice when doing so. Alternatively, the creators can request that ISS commercialize the software, in which case the software and the revenues earned would be treated in the same manner as with a patentable invention.