Ownership of Intellectual Property
Introduction
This policy identifies ownership of Intellectual Property (IP) created by Members of the University Community.
As an academic community, the University values scholarly activity, including the creation and sharing of ideas and knowledge. Efforts to increase and to communicate knowledge will often result in the creation of IP, the rights in which may be conferred or protected by law. Within the University community, it is important to ensure that such IP rights are properly conferred on, and protected for, all those who are responsible for the development of the IP, while at the same time encouraging openness and free exchange of ideas. The main purpose of this policy is to define clear ownership, disclosure, and commercialization procedures, in order to encourage and provide an incentive for creativity and innovation among faculty, staff and students, knowing that the tangible results of their scholarly activity will be valued and protected.
As well, the University specifically recognizes and respects the IP of historically underrepresented groups, and strives to foster and promote mutually respectful and beneficial relationships particularly when engaging with these groups. It is important to acknowledge that policy-style documents, such as this policy itself, are typically based on colonial worldviews, values, legal systems, and concepts that may be incompatible with varied cultural and Indigenous ways of knowing.
Beyond the specific matters prescribed by this policy, because of the complex interactions of Members of the University Community in the course of their work, it is critical that all parties discuss and negotiate issues pertaining to IP with professionalism and in good faith.
Definitions
Policy
The University of Regina is committed to the advancement and the sharing of knowledge. It follows that one of the University’s primary responsibilities is to disseminate the results of the intellectual activities of its faculty, staff, and students by supporting its Employees in the creation and dissemination of their IP. It provides this support by making available facilities, equipment, human resources and information resources, and actively helping creators to seek additional support for creative activity from external sources, both public and private.
The University supports the scholarly research and other creative activities that form part of the basic duties of its employees, in part by making assistance available through the Office of the Vice-President (Research). The University encourages Academic Staff Members to protect their IP and to make their IP as freely accessible to the academic community and the public as is reasonable in any given situation. In addition, the University recognizes that in the case of externally-sponsored or contract research activities, ownership of IP may be determined in whole or in part by the terms of the grant or contract with the sponsor or contracting party.
While the University may enter into a commercialization agreement with an Academic Staff Member, its primary objective in so doing is to support and protect both the individual and the institution. Significant investments of university funds should not be exploited solely for private gain. Rather, the University’s resources and commercialization activities are meant to move discoveries out into the world for the benefit of society, the economy and the environment. In principle, the University’s share of revenues generated from a commercialization agreement should be used both to support research and related academic activities in the University and to provide the administrative infrastructure associated with commercialization (IP protection, entrepreneurial supports, licensing).
In the implementation and interpretation of this policy, the following guiding principles will apply:
1. The University has no claim on Traditional Academic Works unless they have been created with the use of the University's Specialized Resources;
2. For Intellectual Property created by Academic Staff Members, neither the Creator nor the University may be compelled to commercialize any Intellectual Property; and
3. Nothing in this policy shall supersede the provisions of any applicable collective agreement.
Use of Specialized Resources
Deans are responsible for developing a definition for Specialized Resources for their Faculty, and should identify and maintain a list of Specialized Resources for their Faculty based upon the definition, in accordance with Article 29.1.7 of the URFA’s Collective Agreement with the University. Each Dean will exercise judgment based on the situation and practices applicable to each discipline to determine what constitutes significant / material use of Specialized Resources.
While it is normally the Dean’s responsibility to evaluate situations and determine if significant / material Specialized Resource use has occurred, the employee should inform their supervisor and their Dean if their work involves more than nominal Specialized Resource use.
In the event that a Creator wishes to commercialize IP that was developed using Specialized Resources (i.e., facilities and equipment not available without charge to the general public, nor general office supplies and technology made available to university employees; e.g., some resources purchased with external funding and maintained by a paid technician with specialized training), the Creator must disclose this intention to their Dean or direct supervisor.
In the event that a Creator wishes to commercialize IP that was developed using Specialized Resources (i.e., facilities and equipment not available without charge to the general public, nor general office supplies and technology made available to university employees; e.g., some resources purchased with external funding and maintained by a paid technician with specialized training), the Creator must disclose this intention to their Dean or direct supervisor.
Roles and Responsibilities
Vice-President (Research)
- Provides oversight and ultimate responsibility for this policy.
- May seek advice on any IP matters from appropriate sources, both within and outside the University and act as a liaison between various university departments, research teams, and external partners regarding IP matters.
Office of Research Services and Office of Research Partnerships and Innovation
- Has administrative responsibility for implementing this policy.
- Evaluates grants and contracts to verify that IP-related clauses, stipulations, guidelines, and requirements are sufficient and consistent.
- Offers advice to Creators on commercialization and IP matters and can negotiate changes to contracts and grant agreements regarding IP rights and ownership with the written agreement of Creators.
- Strives to stay current with developments in the dynamic field of Intellectual Property in order to proactively identify emerging trends, legal changes, and best practices related to IP.
University Employees
- Must maintain adequate records of research activities (e.g., log books) such that the development of any IP is documented.
- Abide by any IP clauses in contracts and grant agreements and to inform all applicable Employees, Students, or Research Personnel of their roles, rights, and responsibilities within a research project and related IP.
- Actively engage in the University's IP procedures, which may involve discussions, disclosures, evaluations, and potential collaborations.
Deans
- Responsible for developing a definition for Specialized Resources for their Faculty, and should identify and maintain a list of Specialized Resources for their Faculty based upon the definition, in accordance with Article 29.1.7 of the URFA’s Collective Agreement with the University.
- Responsible to maintain an up-to-date inventory of Specialized Resources that they propose to allocate for the Faculty's use. This list should encompass cutting-edge tools, facilities, equipment, and any other pertinent resources that can enhance research capabilities.
Intellectual Property Committee
- Deals with any IP-related matters relating to Academic Staff Members, as stated in the Academic Collective Agreement
Students, Employees, and Members of the University Community
- Must disclose any IP developed in the course of their work or university-related activities. This includes any innovations, research outcomes, inventions, software, copyright-eligible artistic works, or any other forms of IP that are generated during university-related activities.
- Adhere to pre-existing contractual agreements, research funding terms, and University policies.
Ownership of Intellectual Property
The University encourages Creators involved in the joint creation of IP to discuss and determine between/among themselves the way in which IP-related issues will be handled. In such cases, decisions about ownership, licensing, use and commercialization should be agreed to in writing by the co-Creators as early as possible in the process in order to avoid later dispute. Should such a dispute arise, it may be referred to the Intellectual Property Committee for a recommendation.
IP rights and ownership can be altered with the prior written approval of the co-Creator(s). Co-Creators should have regard for this and other relevant policies, including those dealing with conflict of interest, integrity in scholarly activity, and professional ethics. Specific ownership is delineated below:
Academic Staff Members
- Ownership will be determined as per the URFA-Academic Staff Collective Agreement
APT Members
- Ownership will be determined in a manner consistent with that used for Academic Staff Members, as per the URFA-APT Collective Agreement
Research Personnel and Visiting Research Scholars
- In the absence of a written agreement to the contrary, Research Personnel and Visiting Research Scholars are the owners of all created IP, and all rights to IP that they create (including copyright, patents, trademarks, and other equivalent rights) while involved in a research project with the University of Regina
- In cases where the Research Personnel or Visiting Research Scholars are employees of another institution, the IP policies of that institution will govern IP ownership and rights for those individuals
Students
- Where a Student creates IP for academic credit or a degree, the Student may own the IP and all rights to IP (including copyright, patents, trademarks, and other equivalent rights).
- Where a Student creates IP as part of their responsibilities as an Employee, they are subject to the same provisions as Research Personnel.
University
- The University has a non-exclusive, royalty-free, license to use, for non-commercial administrative, educational and research purposes, all IP developed by its Employees. The right of the University to reuse these materials is subject to Article 29 of the URFA-Academic Staff Collective Agreement.
- University Employees, Visiting Research Scholars, and Students are the owners of all IP and all rights to IP (including copyrights, patents, trademarks, and other equivalent rights) that they create in the course of their employment or enrollment at the University; however, there may be exceptions through written agreements to the contrary, such as:
- The Sponsor is owner of IP produced by a Creator as a result of a contract between the University and an outside Sponsor under which rights to ownership of the IP are conveyed to the Sponsor, and where the Creator has agreed in advance to the arrangements;
- The University is owner of the IP that is the result of work assigned by the University pursuant to a contract of employment;
- The University is owner of the IP that results from the performance of a contract for service, agreement, or commission in which the University and the Creator have agreed that the IP will be University owned.
- Owners of IP may voluntarily assign or transfer any interest in the IP to the University, including assignments made to enable the University, at its discretion, to transfer ownership to others.
- Where the University is the owner of the IP, it may assign or transfer any interest in the IP to the Creator.
- The University will not make agreements that affect a Creator’s ownership rights without the Creator’s consent.
Confidentiality
- Information pertinent to IP is typically confidential until formal IP protection is secured.
- When circumstances deem it necessary or when mandated by an external entity involved in the safeguarding or commercialization of IP, the Intellectual Property Committee will solicit written consent from the Creator(s), affirming their commitment to maintaining the confidentiality of IP and refraining from disclosing confidential information.
Trade Secrets
- The University has the right to classify certain information as confidential and designate it as a Trade Secret, which is owned by the University. In such cases, all Creators must maintain the secrecy of the Trade Secret and follow the guidelines set forth by the Intellectual Property Committee.
Moral Rights
- The University recognizes that moral rights are non-assignable under the Canadian Copyright Act; if these are waived in copyrighted works, they cannot be claimed in future
Use of the University's Name and Marks
- In order to protect its reputation, the University must control the use of its name and marks. This requirement is especially important in the context of non-university-sponsored commercialization of IP. Under no circumstances may the University be presented, directly or indirectly, as endorsing or warranting a particular product.
- Any use of the University's name or any university-owned mark in connection with any product, service, research project or work, apart from indicating the University affiliation of the Creator(s), requires explicit written permission from the University.
Consequences for Noncompliance
Non-compliance with this Policy may include the misappropriation of the IP rights of another person (governed by GOV-022-025 Research and Scholarly Integrity); failure to appropriately identify and address any real, potential or perceived Conflict of Interest (governed by GOV-022-010 Conflict of Interest and Conflict of Commitment); failure to disclose any proposed commercialization of IP to the Vice-President (Research); and/or failure to acknowledge the use of Specialized Resources in the creation of IP. Such non-compliance will be appropriately addressed, either as research misconduct, contravention of the Code of Conduct, or by adjudication of the Intellectual Property Committee. Academic Staff Members, at their discretion, have the option to consult with URFA on IP matters as per Article 29.1.12 of the Collective Agreement.Processes
Commercialization Partnership with the University
Neither the Creator nor the University is required to commercialize any IP. Exceptions include those cases where an agreement or contract encumbers the IP, such as an externally-funded contract that sets out IP ownership terms, or where the University and the Creator have agreed that IP will be University-owned.
The Creator of IP will disclose to the University any proposed paid assignment, sale, license, or exploitation for profit of any IP that is covered by revenue sharing guidelines from the Vice-President (Research). The Creator and the University will discuss and determine ownership and revenue sharing according to this policy. Disclosure is not required for works placed in the public domain or for assignments or licenses to publishers that do not involve a fee or royalty. The disclosure is made to the Vice-President (Research) or their delegate and copied to the head of the Creator’s department for information.
The nature and scope of University scholarly activity is such that industrially useful and commercially viable IP is sometimes the result. When this is the case, the University encourages University Employees and Students concerned to consider and, where appropriate, undertake commercialization of the results of their scholarly activities.
If (i) the IP was created by University Employees and/or Students in the course of carrying out their University duties, (ii) the IP was created using facilities and equipment provided by the University that were deemed Specialized Resources, and (iii) the Creator intends to pursue commercialization of the IP in question, then the University has the following prerogatives (in accordance with Article 29.1.8 of the UFRA Collective Agreement):
• to co-manage the commercialization process;
• to receive up to 50% of the Net Revenue resulting from commercialization if it has been chosen to manage the commercialization process; and
• to make an offer to the Creator to acquire partial or full ownership of the IP being commercialized.
Creators are free to commercialize IP resulting from un-Sponsored activities without involving the University. However, Creators who intend to commercialize IP results from internally or externally Sponsored activities must inform the University and make arrangements with or through the University to conform with any relevant Sponsorship conditions and for revenue sharing, if applicable.
In the case of commercialization by the Creator(s), the University will have a negotiated share of not more than 25% and not less than 10% of Net Revenues, taking into account the investment made and risk assumed by the Creator(s), the expenses of the commercialization, and the extent to which University resources were used in the creation and development of the work. Alternatives to sharing based on Net Revenue, such as royalty, an equity interest, or a lump sum payment, will be considered.
Formalizing Co-Management of Commercialization
The terms and conditions for co-management of IP commercialization between the Creator and the University must be clearly stated in a written Partnership Agreement before starting active efforts toward commercialization. The Partnership Agreement should outline the respective rights, responsibilities, and expectations of all parties involved.
If the Creator and the University decide to enter into partnership to co-manage commercialization of the IP, the following terms and conditions will apply:
● The University will make every reasonable effort to commercialize the IP in a manner most likely to generate the maximum advantage for all parties concerned.
● The party that undertakes the lead on commercialization, whether the University or the Creator, has a fiduciary obligation to all interested parties.
● Revenue sharing from commercialization of IP will be negotiated between the Creator and the University. Normally, not less than 50% of the annual total Net Revenue will be paid or assigned to the Creator. Revenue sharing may be renegotiated at any time by mutual agreement between the Creator and the University. The Intellectual Property Committee may be consulted if a dispute arises between the parties as to revenue sharing.
● The Partnership Agreement will include a provision for the termination of the Agreement and the resultant effect on IP ownership and sharing of any future revenues.
● The terms and conditions relative to the commercialization partnership will be put in writing and signed by the Creator and the University prior to the active pursuit of commercialization.
● There may be circumstances where the Creator is required to temporarily delay the publication or presentation of the IP within a reasonable period.
Related Information
- Intellectual Property Committee Terms of Reference (URFA Academic Collective Agreement)
- Canada’s Patent Act
- Canada’s Copyright Act
- Canada’s Industrial Design Act
- University of Regina Act
- GOV-022-005 Code of Conduct
- GOV-022-025 Research and Scholarly Integrity
- GOV-022-010 Conflict of Interest and Conflict of Commitment