Policy 29

Commercialization of Research-Derived Intellectual Property

Approved Board of Governors 2011.21

Amendments
September 10, 2011 - Board of Governors
March 21, 2023 - Executive Committee of the Board of Governors

PURPOSE
1. This Policy seeks to support the University’s research and innovation ecosystem and help foster the commercialization of research-derived Intellectual Property. This Policy outlines the commitment, support, and mechanisms developed, by multiple internal and external stakeholders, for effective commercialization of the University’s Intellectual Property.
DEFINITIONS:
1. In this Policy, and any procedure established pursuant to it, the following definitions shall apply:
  1. “Affiliated Hospitals and Research Institutes” means those hospitals and research institutes with a common mandate of education and/or research, recognized by the University, pursuant to a written agreement between the University and a hospital or research institute, as institutions affiliated with the University for the purpose of providing clinical education in the hospitals and/or research institute to students of the University or for the purpose of collaborating on research projects. Examples of Affiliated Hospitals and Research Institutes include, but are not limited to: Bruyère Continuing Care, Children’s Hospital of Eastern Ontario, Hôpital Montfort, Royal Ottawa Health Care Group, The Ottawa Hospital, Bruyère Research Institute, Children’s Hospital of Eastern Ontario Research Institute, Institut du Savoir Montfort, Ottawa Heart Institute Research Corporation, Ottawa Hospital Research Institute, University of Ottawa Heart Institute, University of Ottawa Institute of Mental Health Research;
  2. “APUO” means the Association of Professors of the University of Ottawa;
  3. “Disclosure” means the Researcher disclosing their Research Data and potential Invention to the University that could be of potential interest commercially to the University;
  4. “Faculty Research Office” or “FRO” means personnel within a faculty who interact directly with Researchers and support research and innovation activities;
  5. “Intellectual Property” or “IP” means any form of knowledge, expression, or art (tangible or intangible) created by one's intellect that are proprietary in nature and from which ownership and other legal rights can arise subsisting in technical information, Inventions, Research Data, models, drawings, photographs, specifications, prototypes, computer software and other creations whether or not patented or patentable;
  6. “Invention(s)” means any:
    1. new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, whether or not patentable; and
    2. software developed by Researchers as part of their University employment, appointment, engagement or fellowship;
  7. “Invention Disclosure Form” means the form to be completed by the Inventor(s) to disclose an Invention or potential Invention;
  8. “Inventor(s)” means a Researcher(s) who conceived and/or contributed to the inventive concept of an Invention through Research Data, alone or in combination with other individuals:
    1. using, in any way, facilities owned, operated or administered by the University or using funds of, or funds administered by, the University, or
    2. in the course of their University employment, appointment, engagement or fellowship ;
  9. “ISS” means the University’s Innovation Support Services reporting to the Office of the Vice-President, Research and Innovation;
  10. “Net Revenue(s)” means any royalty, licensing and any other income received as a result of the development or commercialization of the Invention, less any legal or other fees incurred by the University, or by any agent or agency retained by the University, to register, develop, exploit or administer the IP;
  11. “Primary Appointment” means the lead institution (University or Affiliated Hospital or Research Institute) responsible for the appointment and personnel costs of the Researcher or Inventor;
  12. “New Venture(s)” or “Entrepreneurial Venture(s)” means early stage new or existing companies or other legal entities established by the Inventor(s) or University and founded on University IP;
  13. “Research Data” means written and non-written material which is produced by a Researcher during the course of conducting research, including, but not limited to, Inventions, know-how, methodologies, data, records, computer software, program, database and other computer related materials, product or documentation, in any storage media; and
  14. “Researcher(s)” includes individuals employed, appointed, or otherwise engaged by the University or registered in a University program conducting University research, including the University’s academic staff, administrative support staff, postdoctoral or clinical fellows and graduate students, undergraduate students, medical residents, clinicians or physicians with a University academic appointment, visiting researchers, visiting students, or research trainees.
APPLICATION
1. This Policy applies to all Researchers and to any other member of the University community involved with supporting technology transfer and the commercialization of research-derived IP.
GENERAL PRINCIPLE
1. The University, under the leadership of its Office of the Vice-President, Research and Innovation (OVPRI) and the administrative offices reporting to it, is committed to optimizing the commercialization and utilization of outstanding research results through identifying, supporting and enhancing research and innovation efforts that have the potential for new partnerships, Intellectual Property protection, licensing and the creation of New Ventures. These active commitments ensure that commercialization outcomes are maximized for the benefit of the region, for Ontario and for Canada
IP OWNERSHIP
1. The University shall retain ownership of IP in all Inventions and Research Data except when:
  1. the Invention results from activities carried out in collaboration with Inventor(s) from other Institution(s), in which case ownership shall be negotiated by the University on a case-by-case basis;
  2. the Invention results from activities carried out under a sponsored research contract, the terms of which assigned the ownership of Inventions to the Sponsor(s);
  3. the Invention results from private activities of the Inventor(s) carried out wholly on the Inventor(s)’ own time with no involvement of University facilities or resources;
  4. the rights in and to the Invention have been returned to the Inventor(s) by the University; or
  5. the Research Data is created by an APUO member.
2. ISS and FROs will regularly collaborate with Researchers to enhance awareness of IP through outreach to Researchers and create opportunities to provide general overviews on IP, IP-related policies, procedures at the University and the process of obtaining a patent and working with patent offices.
DISCLOSURE
1. If the Researcher(s) who developed the Research Data or created the potential Invention is interested in pursuing commercialization that could be of interest to the University, they, with the support of the principal investigator, are responsible for making a Disclosure to ISS by submitting an invention disclosure form or to their FRO, through the Researcher’s submission to the FRO of their annual research reports. Those in leadership positions within a faculty or academic unit with innovation duties (for example, a Vice-Dean, Innovation and Strategic Partnerships, Director of Innovation and Partnerships or such other leadership positions regardless of their position title) are available for consultation with the Researcher(s) prior to or when making a Disclosure.
2. FROs are responsible for transferring all Disclosures made to it to ISS for review and assessment, as referred to in Section 7 of this Policy. ISS is the central repository for Disclosures and is responsible for the receipt, recording, review, and assessment of Disclosures.
3. University innovation ecosystem partners such as, but not exclusively, the Entrepreneurship Hub (eHub), the Ottawa Health Innovation Hub (OHIH) and Affiliated Hospitals and Research Institutes will work with ISS and FROs in identifying potential Disclosures that may become apparent through their entrepreneurship and innovation programs and initiatives.
4. Upon making a Disclosure, the Researcher(s) will act to ensure that the Research Data are not presented in the public domain during the Disclosure Review and Assessment.
DISCLOSURE REVIEW AND ASSESSMENT
1. ISS is responsible for the review and assessment of Disclosures, for exploring possible pathways towards commercialization and for providing recommendations to Researchers that developed the Research Data. ISS works in close collaboration with the Researcher(s) and the Disclosure review and assessment will include, but is not limited to, the following:
  1. confirming the contributors to the Research Data and potential Invention, their relationship to the University, their affiliations,
  2. determining whether a contract was in place to perform the research work that resulted in the Research Data and examining any terms and conditions relevant to the Research Data or potential Invention,
  3. confirming the role, requirements and expectations of any research sponsors and their requirements and expectations,
  4. assessing the patentability and commercial viability of the Research Data and potential Invention and whether commercialization of an Invention is consistent with the strategic vision of the University based on a number of factors including, but not limited to, the following:
    1) the novelty, utility and obviousness of the idea;
    2) existing/related patent applications or patent;
    3) potential freedom to operate;
    4) cost of patent applications;
    5) availability of institutional patent funds and access to external patent funds;
    6) potential market for the potential Invention
    7) commercial/business opportunities;
    8) development time and cost;
    9) availability of development funding; and/or
    10) level of interest of Inventor(s) and/or potential third-party partners in commercialization
  5. retaining, at the discretion of ISS, a patent agent or other IP expert to provide advice to the University on the relative value and possible approaches to IP protection,
  6. ISS providing recommendations to the Researcher(s), which could include for example, the need for further refinement, collaborations with the private sector to develop the application of the Research Data, publishing in the public domain or defining the best strategy to protect the IP arising from the Research Data. Generally, ISS seeks to provide their recommendations to the Researcher(s) within one hundred and eighty (180) days of the date of its receipt of the Invention Disclosure Form.
2. In the case of Researcher(s) that developed the research Data and who are APUO members, the review and assessment of a Disclosure by ISS will be done in accordance with the APUO Collective Agreement.
3. The University, through its libraries, is committed to maintaining resources for publications and prior art searches, as well as market research queries. The libraries provide support through expertise, and access to specialized resources, to support ISS in completing IP prior art searches as part of the disclosure review and assessment process.
PROTECTION OF IP
1. If ISS determines, after its review and assessment of the Disclosure, that the Research Data or potential Invention has viable commercialization opportunities and that the protection of IP is warranted, then ISS will work with the Inventor(s) to do the following:
  1. give further and specific consideration to IP ownership, to identifying and confirming the Inventors, and any home institutions/organizations if there are third parties involved in the development of the Research Data or potential Invention
  2. develop a strategy to best prepare the Invention for the protection of IP, which, as an Ontario-based university and to ensure the benefits to be derived from Inventions are available to Ontarians and Canadians, will include the pursuit of a patent application through the Canadian Intellectual Property Office (CIPO);
  3. as needed, involve relevant external parties (those involved in the research that generated the IP associated with the Invention or those seeking to license the IP) in discussions about the strategy for the protection of IP;
  4. as needed, retain external professional advisors or parties to provide advice and insights into markets and into relevant jurisdictions other than Canada for the exploitation and protection of IP;
  5. have the Inventor(s) assign all rights in and to the Invention to the University, including, but not limited to, signing all documentation necessary to give effect to such assignment.
2. If ISS determines after its the review and assessment of the Disclosure that the University will not immediately pursue IP protection, then at the request of the Inventor(s), the University may assign all or part of its IP rights in and to the Invention to the Inventor(s) in accordance with terms and conditions for such assignment established by ISS, which may include conditions whereby the University receives Net Revenues and the University retains a fully-paid up, perpetual and non-exclusive right to use the Invention(s) for University purposes or in connection with Affiliated Hospitals and Research Institutes for educational and clinical purposes. In the case of Inventor(s) who are APUO members, the terms and conditions of an assignment shall be in accordance with the APUO Collective Agreement.
3. Inventors are responsible for participating in, and for supporting the protection of the IP associated with the Invention, by developing a detailed description of the Invention, assisting ISS and IP experts engaged by ISS in the preparation of patent applications and by remaining available to assist in the patent application process (for example, assisting with responses to enquiries from the patent offices and patent examiners).
4. ISS will facilitate the communication between Inventors and IP experts, to enable the preparation of strong and broadly defined IP protection (e.g., a patent application). IP experts will work with the Inventors and ISS to prepare the patent applications and throughout the patent application process. ISS financially supports the protection of IP, as well as any IP protection-related actions, such as patent prosecution costs and any associated maintenance fees.
COMMERCIALIZATION STRATEGY
1. Further to its review and assessment as described in Section 7 of this Policy, ISS is responsible for leading the development of the commercialization strategy for the Invention in close collaboration with the Inventor(s) and with FROs and IP experts, as needed and will assist Inventors to ensure they understand the commercialization stages.
2. Within the time period set out in Section 7.1, ISS will outline, with the Inventor(s), the commercialization strategy of the Invention and will establish any necessary terms and conditions under which the University will proceed with the commercialization of the Invention. Where an Inventor is a member of the APUO, such terms and conditions shall be in accordance with those set out in the Collective Agreement in effect at the date of the decision to commercialize the Invention.
3. The main types of commercialization strategies used by the ISS, on behalf of the University, are:
  1. licensing of the Invention to an external party, and
  2. creation of a New Venture and licensing of the Invention to the New Venture.
4. The commercialization strategy for the Invention should consider ways to provide the maximum benefits to society — social, economic or environmental — with a view to Ontario being a rich innovation ecosystem for the commercialization of IP. It should also consider elements such as, but not exclusively, the IP protection strategy, contributors to the development of the IP (e.g., private sector organization engaged with the University in a collaboration) and the potential markets that may be served by the potential new products and services arising from the Invention.
5. ISS and FROs have a critical role in supporting the establishment of partnerships and collaboration with external parties (e.g., industry, government) to support the commercialization strategy. Where further pre-commercialization research activities are recommended as part of the commercialization strategy, Inventors are responsible for engaging with their FROs to explore available mechanisms in place (e.g., innovation support funds, agile New Venture services and support) to bring an Invention to the commercialization stage and attract external parties.
6. As part of the commercialization strategy of the Invention, ISS and the Inventor(s) may consult with external organizations or programs that facilitate industry research and development partnerships to enhance the technology readiness level of the Invention and to provide experiential training opportunities to University trainees.
7. Regarding the creation of New Ventures or existing Entrepreneurial Ventures, the Office of the Vice-President, Research and Innovation is responsible for the following:
  1. maintaining an innovation ecosystem, within the University’s available financial and other resources, that supports the creation of New Ventures or existing Entrepreneurial Ventures and enables them to access:
    1) lab spaces;
    2) infrastructure for research and expertise
    3) cost-effective consumables to assist in accelerating the process of developing new products; and
    4) support from ISS and FROs to identify collaboration and funding opportunities.
  2. approving conflict of interest and conflict of commitment guidelines established and implemented by ISS that will assist FROs, Researcher(s) and Inventor(s) in,
    1) identifying and disclosing situations of actual or perceived conflict of interest and/or conflict of commitment arising from or concerning the commercialization of IP or of the Invention; and
    2) avoiding or managing such situations.
PATENT PORTFOLIO MANAGEMENT
1. ISS is responsible for the management of the University’s IP portfolio, which includes the following:
  1. managing the patent application process, including ensuring timely responses to patent offices and payment of fees;
  2. managing issued patents and their associated licenses;
  3. monitoring licensed technologies to ensure the ongoing commitments from licensees are being met and that commercialization activities are progressing, and to actively participating in the shareholders’ discussion in the case of a New Venture creation; and
  4. ensuring periodic reviews of the University’s IP portfolio to determine the need for divestment (if any) in patents, or patent applications, due to lack of commercial traction and to ensure the best allocations for financial investments in the University’s IP; the approach to divestiture can take several forms, including the re-assignment of the IP to the original inventor(s) where ISS maintains close contact with inventors who decide to pursue the commercialization of the IP.
DISTRIBUTION OF NET REVENUE
1. Subject to Section 9 of this Policy, the Net Revenue (s) shall be distributed as follows:
  1. in the case where the University assumes full responsibility for the commercialization of the Invention: 80% of the first $100,000 and 50% of the remainder of Net Revenue(s) received by University shall be paid to the Inventor(s); or
  2. in the case where the University assumes full responsibility for the commercialization of the Invention and the Inventor is an APUO member: the Net Revenue(s) shall be paid in accordance with the guidelines established in the APUO Collective Agreement.
2. In the event that there is one or more Inventors, ISS will determine the relative contribution each Inventor to the Invention of and the relative share of the Net Revenue(s) payable to each Inventor. When an Inventor is a member of the APUO, the relative contribution and the relative share of the Net Revenue(s) payable of the Inventor shall be determined in accordance with the APUO Collective Agreement.
3. ISS shall provide an annual reporting on the commercialization activities to the Inventor(s) receiving Net Revenues.
AFFILIATED HOSPITALS AND RESEARCH INSTITUTES
1. Notwithstanding anything contained in this Policy, when an Invention is jointly developed with a Researcher whose Primary Appointment is at an Affiliated Hospital and Research Institute, ISS will discuss with the relevant Affiliated Hospital and Research Institute matters of ownership and of commercialization of the IP and of the Invention and will negotiate such matters on a case-by-case basis, taking into consideration the following elements:
  1. such Researcher may be subject to the IP and commercialization policies of their Affiliated Hospital and Research Institute and ISS will work with the relevant Affiliated Hospitals and Research Institutes to try to harmonize this Policy and related procedures with the IP and commercialization policies of such Affiliated Hospital and Research Institute;
  2. the sharing of Net Revenues between the University and the Affiliated Hospital and Research Institute should be negotiated based on the level of contribution of each party to the research from which the IP and Invention arose;
  3. ISS should seek to obtain the Affiliated Hospital and Research Institute’s agreement to provide ISS with statements on any Net Revenue received by the Affiliated Hospital and Research.
CONFIDENTIALITY
1. Generally, information related to the Invention is considered confidential information until protection of the IP is obtained. Researchers, Inventors and University personnel are expected to maintain the confidentiality of such information. ISS is responsible for informing the Researcher, Inventor and University personnel of any confidentiality obligations associated with the protection and commercialization of IP. If ISS considers it appropriate or if required by an external party involved in the protection or commercialization of IP, then ISS shall obtain the written agreement of the Researcher, Inventor and University personnel to respect confidentiality obligations and not to disclose confidential information.
REVIEW AND IMPLEMENTATION
1. The Vice-President, Research and Innovation is responsible for ensuring a periodic review of this Policy as necessary.
2. ISS is responsible for the implementation of this Policy.
APPROVAL AND AMENDMENTS
1. The Vice-President, Research and Innovation is responsible for recommending amendments to this Policy for approval by the Administration Committee.
2. Notwithstanding Section 15.1 of this Policy, the Secretary-General may amend this Policy without the need to submit such amendment to the Administration Committee for approval if such amendment is required to,
  1. update or correct the name or title of a position, unit, law, regulation, policy, procedure or authority; or
  2. correct punctuation, grammar, typographical errors, revisions to format and other technical revisions, where appropriate, if the correction does not change the meaning of a provision or make such other correction if it is patent both that an error has been made and what the correction should be; or
  3. correct the form of expression of a provision in French or in English to be more compatible with its form of expression in the other language; or
  4. Make consequential amendments to conform with or arising from another University by-law, resolution, policy or procedure.
3. The Vice-President, Research and Innovation may establish, amend, abrogate procedures for purposes of the effective implementation of this Policy, provided that such procedures are consistent with the provisions of this Policy.