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A Guide to Protecting Intellectual Property
This Guide to Protecting Intellectual Property has been prepared for
the Canadian University Intellectual Property Group (CUIPG) to provide
the Canadian university community with information on matters
pertaining to intellectual property.
The Canadian University Intellectual Property Group comprises the
Directors of Intellectual Property/Industrial Licensing offices at the
following Canadian universities: British Columbia , Alberta , Waterloo , Western Ontario , McMaster , Toronto , Queen's , Montreal , McGill and Laval .
This guide is copyright-free and may be copied and distributed by any Canadian university.
Table of Contents
> Overview
> Patents
What is Patentable?
How Do Foreign Patents Work?
> Publication
Grace Period
What is Public Disclosure, and How is it Determined??
What is the Effect of Public Disclosure?
> Copyright
> Know-How and Trade Secrets
> Confidentiality Agreements and Biological Material Transfer Agreements
> Invention Disclosure (Confidential)
When Should I Disclose?
How Do I Make an Invention Disclosure?
Inventorship
What Searching Should Be Done?
> Commercialization Process
Overview
What is intellectual property?
Intellectual property, simply defined, is any form of knowledge or
expression created with one's intellect. It includes such things as
inventions, computer software, trademarks, literary, artistic, musical
or visual works, and even "know-how."
Inventions may be protected by patent or industrial design
registration. Software, literary, artistic and musical works may be
protected by copyright.
The initial ownership of intellectual property, in most cases,
resides with the creator of that intellectual property, but in many
cases rights are assigned to the university. Policies with respect to
intellectual property vary at different institutions and all readers
are encouraged to review the policy of their respective institutions
relating to ownership, obligation to disclose, sharing proceeds from
commercialization and conflicts of interest. Traditionally,
universities in North America have allowed their faculty members to
retain their copyright in literary, artistic and musical works.
Most inventions and software created at Canadian universities are
based on research primarily sponsored by some form of government
funding. There is, therefore, some onus on those who own that
intellectual property to make efforts to ensure that it is utilized for
the benefit of the public at large. That, in most cases, requires
protection and commercialization through, if possible, a Canadian-based
firm. Intellectual Property Management offices have been established at
most research-intensive universities to provide advice and services to
the university community in order to facilitate the protection and
commercialization of intellectual property.
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Patents
What is a Patent?
A Patent is a right granted by a national government, upon application,
and in exchange for a complete disclosure of an invention. The
disclosure is initially a confidential disclosure to the patent office,
which later becomes a non-confidential disclosure to the public at
large. A patent grants to the applicant the right to exclude others
from making, using or selling the claimed invention for a limited
period of time. In Canada , for example, it is 20 years from the date
of application, for applications filed since 1 October 1989 . In the
United States , the term is also 20 years from the date of the first
filed U.S. application; however, for applications filed since 29 May
2000 , the term may be extended based on any delays in issuance of the
patent caused by the U.S. Patent and Trademark Office .
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What is Patentable?
By law, in order to be patentable, an invention must be novel, it must
not be obvious to a person skilled in the field of the invention, and
it must have utility.
Products, processes, machines, manufactures or composition of
matter, or any new and useful improvement of any of these (such as new
uses of known compounds), are patentable subject matter.
Novel genetically engineered lower life-forms and new microbial
life-forms can be patented in some jurisdictions, such as the United
States and Canada , but not in others. Novel genetically engineered
higher life-forms are patentable subject matter in some jurisdictions
including the U.S. , but have been found by the Supreme Court of Canada
not to be patentable subject matter in Canada .
Methods of medical treatment are also patentable in some
jurisdictions, such as the United States , but not in others, including
Canada . Scientific theorems or principles, and methods of doing
business or playing games are not patentable subject matter in Canada .
Provided that software can meet the usual criteria for
patentability, it can be patented in some jurisdictions. In addition,
software is protected by way of copyright.
New plant varieties can be protected under the Plant Breeders' Rights Act in Canada or by a Plant Patent in the United States . Some other jurisdictions, but not all, have equivalent legislation.
Integrated Circuit Designs can be protected in the United States under the Maskworks Protection Act. Canada has the Integrated Circuit Topography Act . Other countries are considering similar legislation.
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How Do Foreign Patents Work?
Patents do not cross national boundaries and, at present, there is no
such thing as an International Patent. Harmonization of the world's
patent laws is progressing rapidly, but in general each country grants
its own patents based on its own standards.
Under the Paris Convention of 1887, the date of the first filed
application for a specific invention becomes the effective filing date
for all subsequent applications for the same invention filed in member
states. However, subsequent applications for the invention must be
filed within one year of the filing date for the first member state.
In Europe it is possible at the European Patent Office
to file a single application (in English, French or German) to protect
one's rights in up to 27 European countries. A single regional patent
is granted but is not effective until it is ratified in each National
Patent Office selected by the applicant by paying the appropriate
national fees, translating into the local language, and meeting local
requirements as to form of claims, etc.
In our global economy, it is usually advisable to initiate steps to
protect foreign patent rights before commercialization is contemplated
or completed. The Patent Cooperation Treaty ,
to which Canada acceded in 1989, offers an alternative mechanism of
initiating steps to protect foreign patent rights by deferring some of
the major expenses (e.g., foreign translation costs) for up to 30
months from the initial patent filing.
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Publication
As mentioned above, one of the criteria for patentability of an invention is that the invention must be novel, i.e., no prior public disclosure
of the invention has been made by the inventor or others. Most
developed countries follow a policy of absolute novelty, i.e., no
patent can be obtained if the invention has been publicly disclosed in
any manner, anywhere in the world. This is very important when
considering the effect of publication in a scientific or other journal
on a foreign patent application. Almost all industrialized countries
are signatories to the Paris Convention.
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Grace Period
Canada and the U.S.A. , however, provide a grace period of one year
from the first public disclosure of the invention, during which the
inventor can file a patent application, provided that the disclosure
was made by the inventor or someone who obtained the information from
the inventor. Few other countries are as generous to inventors and it
is advisable, therefore, not to disclose the invention to anyone until
a patent application has been filed. Disclosure can, however, be made
on a confidential basis and such disclosure will not affect the ability
to patent in absolute novelty jurisdictions.
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What is Public Disclosure, and how is it determined?
Any printed publication in a newspaper, scientific journal or other
written form available on an unrestricted basis is a public disclosure,
as is an oral presentation at a public meeting. Published pre-prints or
abstracts of (a) papers for a scientific meeting or (b) degree theses
are also considered public disclosures. Other forms of public
disclosure include conference proceedings and seminars; scientific
conferences, poster sessions, industry meetings and offers to sell.
It is the relationship between the parties that determines whether
the disclosure is public or made in confidence. The disclosure is
legally confidential if, when receiving the information, the receiving
party personally understands and accepts a duty to keep the information
confidential. A disclosure to an academic colleague may or may not be
considered confidential depending on the understanding between the
parties. (See also grant applications , below.)
NOTE: For U.S. patent applications, a sale in the U.S. (or even an
offer for sale) of an invention will destroy novelty, if the sale or
offer for sale is made more than one year before the filing date of the
patent application. This holds true even if the offer for sale in the
U.S. is made under a confidentiality agreement.
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What is the Effect of Public Disclosure?
A written or oral public disclosure can be used as a prior art
reference by a patent office examiner evaluating a patent application
if enough of the invention is disclosed to enable a person skilled in
the relevant field to put the invention into practice. Such disclosure
can also be used by a court to invalidate an issued patent. In some
countries, experimental use of the invention in public will count
against patentability.
Grant Applications:
It is advisable to disclose an invention to your institution's
Intellectual Property Management Office before the details of the
invention are included in any grant application . Disclosure to the
Intellectual Property Management Office will be confidential. Although
disclosure in a grant application does not represent public disclosure,
at least in Canada , reviewers will be exposed to the invention and
represent an unnecessary threat to patentability. In the United States
, grant applications may be considered public documents under Federal
Freedom of Information legislation.
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Copyright
Copyright is the exclusive right of the creator, or subsequent
copyright holder, to reproduce a work. Copyright subsists as soon as an
artistic, literary or musical work or software is created, and
registration at the Copyright Office is purely voluntary. It is
however, advisable to put the public on notice that the creator is
claiming copyright by marking all copies of the work with a copyright
notice.
Registration of a copyright facilitates the copyright holder's rights in the event of a legal dispute.
Copyright protection in Canada lasts for the life of the creator plus
fifty (50) years. Copyright extends to other countries by virtue of
treaties such as the Berne Convention and Universal Copyright Convention and the term in other countries depends on the national law.
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Know-How and Trade Secrets
A researcher's know-how can often have considerable value. A researcher
will often possess valuable confidential know-how and experience to
permit commercial optimization of a process or product. Know-how or
trade secrets can in fact be licensed independently and a know-how
license need not be restricted to the term of any patent.
Confidential information and know-how should, therefore, be clearly
defined and disclosures should be covered by a written contract.
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Confidentiality Agreements and Biological Material Transfer Agreements
An invention may be disclosed prior to filing a patent application,
provided it is covered by a Confidentiality Agreement between the
inventor and the party to whom the invention is disclosed. Such
agreements provide evidence of the receiving party's understanding of
the confidential nature of the information and express in written form
the receiving party's obligation to keep the information in confidence.
These are simple agreements and can be obtained from your institution's
Intellectual Property Management Office.
Biological Materials can be used to develop modified or derivative
products from the original materials. It is important to control the
use of transferred biological materials, and standard material transfer
agreements are now being used by most institutions in North America .
You should consult your institution's Intellectual Property Management
Office before you transfer any biological material to any academic or
industrial collaborator/researcher.
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Invention Disclosure (Confidential)
When Should I Disclose?
Most countries, including Canada , operate under a "first-to-file"
patent system. That is, when two or more applications for patent for
the same invention are pending, the patent will be granted to the first
applicant to file a patent application.
The United States operates on a "first-to-invent" system, i.e., the
patent is granted to the person able to prove the earliest date of
invention, regardless of the date of filing of the patent application.
Previously under U.S. law, a date of invention could only be
established for (a) work done in the United States or (b) the date of
introduction of the invention into the United States if the work were
done outside of the United States . However, under the North American
Free Trade Agreement (NAFTA), Canadian and Mexican inventors can
establish a date of invention based on work done in either Canada or
Mexico on or subsequent to 1 January 1994 . If the invention date is
prior to 1 January 1994 , the old rules apply.
Taking this a step further, under the General Agreement on Tariffs
and Trade (GATT) (Uruguay Rounds), inventors in any World Trade
Organization (WTO) country can, with certain provisos, establish an
invention date for work done in a WTO (GATT) country on or subsequent
to 1 January 1996 . Here, again, the old rules apply for work done
before this date.
It is important therefore that you discuss your invention with your
Intellectual Property Management Office as early as possible in order
to establish an invention date, and certainly before any publication,
including abstracts, has taken place.
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How Do I Make an Invention Disclosure?
Your first step should be to contact your institution's Intellectual
Property Management Office to indicate that you believe an invention
has been made. Each university has a different intellectual property
policy and your disclosure may be handled slightly differently
depending on the institution. You will be asked to complete an
Invention Disclosure Form. Consult your institution's Intellectual
Property Management/Technology Transfer office, or their website, for a
copy of this form.
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Inventorship
An inventor is a person who has had an original idea or otherwise
contributed intellectual input to one of the claims of a patent. A
patent application may be filed naming one or more inventors. A person
who works under the direction of another and does not contribute any
original thought to the claimed invention, i.e., "works as a
technician" to confirm an invention, must not be named as an inventor.
Professional collaborators may or may not contribute to the inventive
concept being claimed and great care should be taken in deciding who
should be named as an inventor. It is important to understand that
inventorship is a legal matter, not a collegial matter -- not all
co-authors of a publication need be co-inventors. Collaborators not
deemed to be co-inventors can, however, be recognized through some
sharing of the net proceeds from the invention. If you are in doubt as
to inventorship, your Intellectual Property Management Office should be
consulted and a professional opinion obtained.
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What Searching Should Be Done?
An extensive literature search should, of course, be done before any
research project is undertaken. Once an invention has been made, you
should update your literature search and, if possible, supplement it
with a review of the patent literature. All available literature of
relevance should be drawn to the attention of the Intellectual Property
Management Office. The Intellectual Property Management Office will, if
appropriate, arrange for a detailed patent search, usually in the
United States Patent Office.
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Commercialization Process
Before an institution's Intellectual Property Management Office devotes
considerable resources to protecting and exploiting an invention, you
will most likely be asked to assign your invention to the institution
or its designate. An assignment is a legal document which transfers
ownership of your intellectual property to the institution, and it is
recorded in the Patent Office.
The Intellectual Property Management Office normally bears the
initial cost of protecting and exploiting your invention. If your
invention is successful in generating income, the first charge on that
income is reimbursement of the costs. Thereafter, income will be
divided between the institution and the inventors. The inventor's
return will vary depending on your institution's intellectual property
Policy. You may expect anywhere from 25 - 50% of the net proceeds.
A sharing agreement should be put in place and lodged with the
Intellectual Property Management Office at the outset to formalize how
the inventor(s) will share their proceeds. There is no reason why an
inventor cannot allocate a portion of his/her proceeds to someone who
has contributed to the development of the invention but who is not
formally considered an inventor.
The Intellectual Property Management Office will have a number of
possible ways to attempt commercialization of the invention. If
suitable, the invention may be used to facilitate the formation of a
new company to develop the technology. If the invention is not suitable
for new venture creation, a licensee(s) may be sought to commercialize
the invention under license. Licenses can be arranged in a variety of
ways, but almost all will include some form of continuing royalty.
An inventor can play a critical role in commercializing the
invention. The inventor will normally be relied upon to participate in
scientific discussions with potential commercial partners and, on
occasion, may be actively involved in negotiating a particular deal.
Participation by an inventor will, however, always be subject to the
policy of each institution.
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