Intellectual Property (IP) creators own their IP rights in accordance with Policy #73, which at the highest level of interpretation grants IP creators with full right of ownership in such IP. However, Policy #73 does specify some exceptions or constraints to such ownership rights (eg. IP terms and conditions within a contract in sponsored research with an external partner, student thesis works, etc). IP creators are advised to carefully review the details of Policy #73 and in the event there is deemed to be an IP ownership restriction, they should contact the appropriate Office of Research group that is likely responsible for administering such research contract details (eg., Research Partnerships for industry sponsored contracts).
In situations where the IP creators have determined they have the entire right of ownership and where there is a desire to seek patent protection for their IP, they generally have the following pathways to consider: i) personally file their own patent (not generally advised given the complexity and professional skills required to secure a strong (ie. enforceable) patent), ii) at their own cost, independently retain the legal advisory services (ie. patent agent) to file for patent protection, iii) engage with WatCo under a mutually voluntarily basis to assess and consider having the University formally assume and pay for such patent filing activity.
More information about protecting intellectual property is available from the Canadian Intellectual Property Office.
It is important to be aware that public disclosure of your IP, prior to filing for patent protection, can have a serious negative impact on your ability to secure wide geographical patent protection for your IP.
In an academic environment, it is common that IP creators might be involved in presenting their research at conferences, or publishing in journals, or thesis defense proceedings (with open invitation participation from campus and non-campus members), or having preliminary discussions with potential research funding partners (eg. a company). All of these activities could represent public disclosure that if not carefully managed could restrict your ability to secure broad patent protection.
The following represents some key points you should keep in mind concerning public disclosure and it’s potential impact on securing patent rights:
- Submittal of papers to refereed journals or conference organizers is not public disclosure and will not affect the ability to patent an invention, as long as it is not published or circulated outside of the journal reviewers and that the journal reviewers are subject to terms of confidentiality with the journal publisher.
- Presentations of your research at conferences may constitute public disclosure depending on the depth of detail you provide (i.e simply presenting the results of your research but not providing high level details of how the results were generated may not be overly problematic)
- The use of a Non-Disclosure Agreement (also referred to as Confidentiality Agreements) is a highly effective way of sharing your research details with others (eg. a company expressing potential interest in supporting a research project) while safe guarding your eligibility to sercure IP patent possibilities.
- Once a patent application is filed, you are free to discuss the IP details, however best practice would be limit such discussions to the areas just covered by the patent application (ie. do not disclose your ideas related to future research pathways related to the IP).
In the event you have a potential interest in eventually filing for patent protection of your IP, it is highly recommended that you contact a member of WatCo for advice on how best to proceed under the circumstances at hand.