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Procedures for Ownership of Student-Created Intellectual Property Policy (11.3)
This online version is for convenience; the official version of this policy is housed in the University Secretariat. In case of discrepancy between the online version and the official version held by the Secretariat, the official version shall prevail.
Approving Authority: Vice-President Research
Original Approval Date: Nov. 30, 2022
Administrative Responsibility: Office of Research Services
Parent Policy: 11.3 Ownership of Student-Created Intellectual Property
1.0 Purpose
1.1 Set out the rights of ownership, including joint ownership, to Intellectual Property (IP) created by Students while attending the University. This procedure outlines the IP disclosure and commercialization for Student-Created IP.
2.0 Definitions
2.1 Intellectual Property: Property created through significant intellectual or creative activity, created in a scholarly, professional, or student capacity, that can be owned by a person. This is a broad concept that includes:
i) Patents, for inventions and the creation of new kinds of technology, including Plant Breeders’ rights;
ii) Copyrights, for literary, artistic, dramatic and musical works;
iii) Trademarks, for words, symbols, or pictures used to distinguish the goods or services of one person from those of another;
iv) Industrial Designs, for visual features of shape, configuration, pattern or ornamentation of an industrially-produced object; and
v) Industrial Circuit Topographies, for three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs.
vi) IP created under this policy includes, but is not limited to, works such as theses, dissertations, cognate essays, research papers, books, poems, plays, scripts, essays, articles, dictionaries, maps, lyrics, musical scores, sculptures, paintings, photographs, films, videos, tapes, computer software, databases, unique names, digital and analogue audio recordings, and inventions of new kinds of technology.
2.2 Student: An individual registered in a course of study as a student at the University, either full-time or part-time, pursuing undergraduate, graduate, or non-degree certificate programs.
2.3 Commercialization: The transfer or commercialization of any IP for commercial gain. Typically, Commercialization is by means of a license grant.
2.4 Creator(s): Any student, current or former, that develops or has developed an IP within the University’s activities and functions during their time as a student.
2.5 Intellectual Property (IP) Agreement: The agreement between a Creator and the University assigning the IP to the University, defining the responsibilities of each party and the sharing of the Net Revenues.
2.6 Net Benefit: A net social and/or economic value generated for the people of Ontario, the Ontario economy and/or the Ontario innovation ecosystem.
2.7 Net Revenue: Annual gross revenue received by the University from the Commercialization of IP less the out-of-pocket costs paid by the University for the protection and prosecution, marketing and Commercialization of IP.
3.0 Procedures
3.1 Scope
3.1.1 These procedures shall apply to the following Students who own an IP:
a. Students who create IP that is eligible for protection in the course of employment by the University and whose employment is directly related to their academic program or tied to funding received as a Student, pursuant to Section 5.0 of Policy 11.3;
b. Students who make a significant intellectual or creative input to the creation of IP with a full-time faculty member or part-time contract teaching faculty pursuant to Section 5.06 of Policy 11.3; and
c. Students who create IP that is eligible for protection through the use of significant University resources which exceed the ordinary resources available to a Student pursuant to Section 5.07 of Policy 11.3.
3.1.2 These procedures shall not apply to Students who create IP that is eligible for protection in the course of employment by the University (including Teaching Assistants, Supplemental Instructions, or Research Assistants) do not own the IP, pursuant to Section 5.04 of Policy 11.3.
3.2 Disclosure
3.2.1 A Creator may submit a duly accomplished Invention Disclosure Form to the University through the Office of Research Services in any one of the following instances:
a. When the Creator seeks the assistance of the University in the preliminary evaluation of their IP, the University shall provide guidance on IP and commercialization strategy;
b. When the Creator seeks the support of the University for the protection of their IP and agrees to assign their IP in favor of the University, the University has the final decision on whether to accept the assignment and take on the responsibility for the protection and Commercialization of the IP;
c. When the Creator has agreed, prior to the commencement of a research, to assign their IP to the University; or
d. When the Creator intends to Commercialize their IP, the University will ensure that the IP is cleared from University and third-party encumbrances.
3.2.2 In case of multiple Creators, each Co-Creator must sign the Invention Disclosure. The Creators will agree on individual entitlements to their respective shares of all Creators’ benefits, based on their respective contributions to the IP.
3.3 Assignment to the University
3.3.1 In the case of 6.1.1.b where the Creator seeks the support of the University for the protection of their IP and agrees to assign their IP in favor of the University, the University will assess the patentability and market potential of the IP to determine whether it will accept the assignment and take on the responsibility for the protection and Commercialization of the IP.
3.3.2 The University may hire external counsel to obtain a more detailed assessment on patentability and market potential prior to making the decision.
3.3.3 The University, in deciding whether to accept the assignment, will weigh the costs of protection and Commercialization against the Net Benefit of the IP.
3.3.4 Final determination of acceptance of the IP assignment rests with the Vice-President: Research.
3.3.5 Should the University decide to accept the assignment of the IP, the Creator or each Co-creator will assign their rights to the University through the execution of an IP Agreement, signed in accordance with Policy 5.7 on Signing Authority.
3.3.6 The Creator, or each Co-Creator, and the University will negotiate the sharing of Net Revenues received from Commercialization and such sharing will be included in the IP Agreement.
3.4 Commercialization by the University
3.4.1 When the University receives an assignment of IP, it will take on the responsibility for the protection and Commercialization of such IP.
3.4.2 The University will fully consult with the Creator as to the best IP and Commercialization strategy.
3.4.3 For patentable inventions, patent applications will be initially filed in Canada and/or the US, unless it is deemed more equitable to initially do so elsewhere.
3.4.4 In seeking potential Commercialization partners, consideration will initially be given to those based in Ontario, and then those within Canada. Commercialization partners outside of Canada will be considered when the following conditions are met:
a. There is no organization within Canada that can undertake the Commercialization of the IP; and
b. The Commercialization by an organization outside of Canada will result in Net Benefits to Ontario and/or Canada.
3.4.5 In the instance where the market for the technology is largely outside of Canada, Ontario and/or Canadian organizations will be considered initially as Commercialization partners.
3.4.6 The Creator will be provided with an annual report on revenues received from the Commercialization of IP.