IP and Technology Transfer Guide for Laurier Researchers

April 19, 2022

Intellectual Property and Technology Transfer at Laurier 

Innovation and creativity play a critical role in every academic discipline. The generation of ideas that can be shared, collaboratively enhanced, and applied for broader societal benefits, are directly tied to intellectual property (IP) rights. Creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce are all considered to be IP, which can be protected in law by patents, copyright, and trademarks.  

Technology Transfer and Knowledge Mobilization are key terms used to describe the process of translating knowledge and discoveries into a format that is more accessible to the general public. Academic researchers participate in these processes for many reasons, including: 

• Making a positive impact on society. 
• Personal fulfillment from seeing their ideas put into practice. 
• Enriching educational opportunities and future employment prospects for students. 
• Achieving recognition and financial rewards. 
• Attracting additional research funding and sponsors. 

The Industry Liaison Specialist manages Laurier’s portfolio of IP to support the academic community in the transfer of technology and inventions by: 

• Advising on University policies on intellectual property. 
• Evaluating invention disclosures by faculty, staff, and students. 
• Supporting the protection of inventions through patents and other means. 
• Assisting with grant funding to support market assessment, developmental, and proof-of-concept studies, such as NSERC Idea to Innovation. 

• Preparing marketing materials to share with potential licensees and commercial partners. 
• Negotiating license agreements with technology receptors. 
• Identifying and engaging with strategic partners to translate early-stage discoveries into market-ready technologies. 

Intellectual Property and IP Rights 

Faculty members and students may generate IP through the course of their research. These can be creative works, technical inventions or software, or even new brand names. Different IP are protected by different legal rights: 

IP rights are characterized by three features: 

• Territoriality – IP rights are protected by laws. Different countries have different IP laws. For this reason, any IP owner who wishes to protect their IP in one country must consider the IP laws in that country, and an IP owner who wishes to protect their IP in many countries must register their IP in all those countries. 
• Negative Right – IP rights are not rights to do certain acts. Rather, they grant their owners the right to exclude or prevent others from doing certain acts. It is thus the responsibility of the owner to enforce their rights. 
• Time-Bound – IP rights are not perpetual. IP systems were put up to balance innovation, creativity, and culture on one hand, and income generation for the owner on the other. At the end of the life of the IP right, the IP will become part of the “public domain” and everyone will be free to use them without seeking a license from the holder of the right. 

Patents 

A patent is granted by a government and gives the holder the right to exclude others from making, selling, or using the invention it protects. According to the Canadian IP Office, an invention should satisfy the following requirements to qualify for patent protection: 

• New - everywhere in the world 
• Useful – functional and operative 
• Inventive – not obvious to a person skilled in the art 

Inventors should take note that their very own publication can destroy the “newness” or “novelty” of an invention, rendering it nonpatentable. For this reason, researchers seeking to patent their invention who have already made public disclosures are requested to contact the Industry Liaison Specialist urgently. 

The invention being sought for patent protection may be a product, a composition, a machine, a process, or an improvement of any of the preceding. 

Patents, once issued, offer protection in the jurisdiction for 20 years from the date of filing, provided that the annuities are paid. In addition to the government fees for filing, prosecution, and maintaining a patent, one must pay patent attorneys to draft, prosecute, and manage the patent. For this reason, patenting must be given careful consideration before it is pursued. However, considering that it grants exclusivity for 20 years, patent protection can be seen as a further investment to protect the research costs in developing the invention. 

Industrial Designs 

If patents protect the function, industrial designs protect the form or the aesthetic of a creation—for example, the function of a chair may be protected by a patent, but the different designs for a chair may be registered as different industrial designs. The holder of an industrial design has the right to exclude others from making, selling, or importing an article that embodies a design that is the same or similar to the registered design. This right can be granted for up to 15 years. 

Copyrights 

A copyright is the right to prevent others from “copying” an author’s work. Works eligible for copyright protection may be: 1) literary works or works consisting of text such as books, poems, computer programs; 2) dramatic works such as audiovisual films, plays; 3) musical works, whether or not they consist of words; or 4) artistic works such as photographs, drawings, sculptures. 

Copyright protection is granted from the moment a work is created. However, it is possible to register your copyright with the Canadian IP Office in order to obtain a certificate. 

The general term of copyright is the lifetime of the author plus an additional 50 years from the author’s death, or the death of the last surviving author, if the work is co-authored. 

Software and Computer Programs: Patent or Copyright? 

In some countries such as the US, software is considered patentable subject matter. In Canada, however, software and computer programs are considered literary work and are only eligible for copyright protection, unless they form part of a computer-implemented invention or CII. The European Patent Office defines a CII as “one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realized wholly or partly by means of a computer program.” 

Trademarks 

A trademark’s primary function is to protect the sign or combination/s of signs that are used to distinguish the goods or services of one organization from another. The signs can be any of the following: words, designs, tastes, textures, moving images, mode of packaging, holograms, sounds, scents, three-dimensional shapes, colours. Trademarks are specific to the goods or services they are registered under: that is, if the word “Banana” is a registered trademark for apparel goods, the owner may exclude other entities from using the same mark “Banana” or a similar mark “Benana” for apparel, but they may not exclude others from using “Banana” for electronics. 

A trademark is the only registered IP that can be perpetually renewed after each 10-year period. 

Technology Transfer 

AUTM defines Technology Transfer as “a formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party.” Traditionally, universities are not equipped to commercialize IPs they develop. Further, research outputs generated by the academe have low Technology Readiness Level or “TRL”—meaning these need more R&D in order to become a product that can benefit its intended market. Companies have more resources to further develop the products as needed and to commercialize them eventually. For this reason, technology transfer is an important process in a university’s mission to create social impact through its outputs.  

Technology Readiness Levels 

Source: European Union 

The process of technology transfer typically begins at the end of research or when a piece of new knowledge, process, or product is created. Researchers who have outputs that have commercial potential are encouraged to reach out to the Industry Liaison Specialist to discuss their IP. They will be asked to disclose details about their IP in order to conduct due diligence and better assess how to proceed. 

Invention Disclosure and Assessment 

Laurier has an inventor-own policy for full-time and contract teaching faculty, and students attending the university, as outlined in Article 36 of the WLUFA Collective Agreement, Article 20.2 of the Collective Agreement for Contract Teaching Faculty and Part-Time Librarians, and Article 5 of Policy 11.3 Ownership of Student-Created Intellectual Property. Researchers are, however, not precluded from assigning their IP to the University. Assigning the IP to the University allows the researcher to focus on conducting research, while still reaping benefits from the commercialization of the IP through royalty shares. Furthermore, IP protection, especially for patents, may require significant financial resources that the University may be able to provide. 

Researchers wishing to assign their IP to the University must first complete an Invention Disclosure Form. The form will be reviewed and evaluated by the Office of Research Services (ORS) team.  Acceptance of the assignment by the institution will be based on an overall assessment of the IP’s patentability or registrability (for non-patent IP), market potential, and social and environmental impact. Final decision of the acceptance of the assignment rests with the Vice-President, Research. In the event that the University, upon evaluation and recommendation of the ORS, decides to accept the assignment through a written IP Agreement, it shall provide the necessary support for the registration, marketing, and commercialization of the IP assigned through the ORS and the Industry Liaison Specialist, and with the support of the researcher.  

IP Protection 

Once assigned to Laurier, the ORS will facilitate filing the IP protection. For copyrights, trademarks, and industrial designs, the process will be straightforward. However, due to the complexity of and the length of time needed for patent drafting, filing, and prosecution, the ORS will retain a patent attorney. With the help of the Industry Liaison Specialist, the inventor/s will work with the patent attorney to ensure that the patent documents sufficiently cover the invention. 

Marketing and Commercialization 

Simultaneously while the patent application is being prepared, or after it has been filed, the Industry Liaison Specialist will prospect potential industry partners for the IP. They will ensure that the inventor/s are involved in discussions with the potential partners. 

In some cases, it might be better to further develop the IP to raise its TRL before attempting to commercialize. Below are links to funding opportunities, the Industry Liaison Specialist will assist you in writing and submitting applications. 

• NSERC Alliance grants support university researchers to collaborate with partner organizations, which can be from the private, public or not-for-profit sectors, on their R&D efforts that will create economic, social and/or environmental benefits to Canada. 

• Mitacs delivers research and training programs in Canada that are designed to build partnerships that support industrial and social innovation in Canada. 

• Accelerate puts the talent of students and postdocs to work with a paid internship at an organization that needs their expertise. 
• Elevate competitive fellowship that supports postdoctoral research management skills and career development during a partnered research collaboration. 
• Globalink offers two-way mobility for senior undergrads and grad students. Fund your students’ research abroad and work with talented international undergrads. 

• Ontario Centre of Innovation (OCI) supports the commercialization of academic intellectual property (IP), industry-academic collaborations and the development and adoption of emerging technologies. 

• Voucher for Innovation and Productivity (VIP) - this program supports the collaboration between Academia and Industry to solve an industry-based problem and drive the commercialization of Intellectual Property  

• SOSCIP provides academic researchers from member institutions with access to leading-edge advanced computing technology to foster innovative research and development projects with industry partners.  
• Innovation funding and support - Government listing of funding and advisory support for research and development (R&D), innovation and commercialization projects. 

If the assessment shows that the IP is ready for commercialization, or if there is an industry partner who is prepared to allocate resources to improve the commercial readiness of the IP, then the University may proceed with commercialization. Commercialization or technology transfer may occur through different modes: 

• Licensing (exclusive or non-exclusive) – a license; certain rights are “given” to the licensee, allowing them to perform certain acts (such as making, using, selling) which would otherwise be prohibited by the University as the holder of the rights. The University can typically charge an upfront fee, milestone payments, and royalties on sales of the IP. 

• Assignment or sale – a complete transfer of rights, typically for a lump-sum amount. The University will lose all rights after the sale, although it may request that the inventors and the University be acknowledged as the source of the IP. 
• Spinoff or start-up – a new venture may be created by the University or the inventors, or both. A license will still be required from the University, since it owns the IP. Equity may be given in addition to the typical fees charged under a license. 

In all cases, Laurier will share the commercialization revenues, after deducting IP registration costs and other direct costs during the technology transfer process, to the inventors pursuant to the IP Agreement. Laurier’s share is invested into future research and technology transfer efforts.  

Forms and Templates 

• Invention Disclosure Form: report an invention to the ORS as the first step towards protecting your intellectual property and commercializing your research.  
• Biological Material Transfer Agreement: transfer proprietary biological materials (e.g. cell lines, genetic material) to and from the University.  
• Non-Biological Material Transfer Agreement: transfer proprietary non-biological materials to and from the University.  
• Mutual Non-Disclosure Agreement: ensure that two-way exchange of confidential information with external parties is protected.  
• Contract Research Agreement: set out the terms of your collaboration with industry partners funded by partnership grants or through direct industry contributions.   

The above forms and templates are for standard use only and may not apply to every situation.  If you intend to use any of these documents, please contact the Industry Liaison Specialist to ensure they are used appropriately. Please note that all agreements must be signed by designated parties from the ORS.  
  

External Resources on IP 

• IP Academy – Canadian Intellectual Property Office - offers online learning modules, scheduled webinars, and case studies for those wishing to have a better understanding of IP and its role in businesses 
• Foundations of IP strategy, International Governance Innovation (CIGI) - Designed as a self-study experience, the content and skill-testing quizzes are perfect for innovative businesspeople and the professionals who support them (such as technology transfer professionals, patent agents, lawyers and business consultants). 
• Knowledge Management and Communication (Ontario University Research Collaboration) - This learning module, funded by the Government of Ontario through eCampusOntario’s support of the Virtual Learning Strategy, contains a chapter on IP and Commercialization to guide researchers through understanding the different IPs and  the process of technology transfer 

• Intellectual Property Ontario - Intellectual Property Ontario is a board-governed provincial agency created to help “postsecondary education and research and innovation sectors generate, protect, manage and commercialize IP”. 

Policies 

Laurier Policies on IP and Technology Transfer 

• Policy 11.2 Contract Research  
• Policy 11.3 Ownership of Student-Created Intellectual Property 
• WLUFA Collective Agreement (Article 36): Intellectual Property, Patents, and Copyright   
• Collective Agreement for Contract Teaching Faculty and Part-Time Librarians 

IP Policies for Tri-council funded research 

• NSERC Policy on IP 
• SSHRC IP and Copyright: Grants