Intellectual Property Policies
What are the University's policies regarding ownership of intellectual property arising from research?
Ownership of patentable intellectual property arising from the research lies with the creator/ inventor at the University. The University researcher provides guidance to the University as to:
(a) whether the patentable intellectual property will be owned by or licensed to the sponsor; and
(b) the terms of such licence.
The University obtains the appropriate ownership or licensing rights from the researcher to permit the University to comply with its contractual obligations to the sponsor through collective agreements between the University and University personnel and other internal mechanisms. The licensing of patentable intellectual property arising from research and sharing of licensing revenues is negotiated through TEC Edmonton on the University's behalf.
Because the University is a publicly-funded institution, any ownership or exclusive licence of the research results given to a sponsor must reserve to the University a non-transferable, royalty-free licence to use those research results created at the University for non-commercial education and research purposes.
Inventors of subject matter in patents are determined by complex legal criteria. The University relies on the law of the jurisdiction where a patent is being filed to guide determination of inventorship of a patent.
Inventorship v. Ownership v. Authorship
Neither joint inventorship nor joint ownership is automatically granted.
Inventors of subject matter in patents are determined by complex legal criteria. The University relies on the law of the jurisdiction where a patent is being filed to guide determination of inventorship of a patent. Inventorship is attributed at the time that the patent is being filed, so it is not appropriate in a research agreement to specify that all patentable intellectual property arising from a particular research project will be jointly invented. A lawful inventor is one who meets the statutory requirements of inventorship and is associated with one or more of the patent claims that formally define the invention. As a general statement, inventorship requires some involvement in the conception of the invention. A contribution of equipment, materials, space or financial resources, for example, does not entitle a sponsor to being named as an inventor.
Ownership is a separate concept from inventorship and is determined by agreement between the parties. Co-owners or joint owners of patents have varying rights dependent on the jurisdiction where the patent is filed. Co-ownership or joint ownership, while on its surface seems like an uncomplicated concept, actually raises a multitude of issues. The varying rights of co-owners and the implications of co-ownership or joint ownership should be carefully considered, including appropriate consultation with knowledgeable parties regarding the legal implications of co-ownership, before a decision is made by a researcher to assign part ownership of a patent to a sponsor or to declare in a research agreement that everything produced in a research project will be jointly owned between the University and the sponsor.
Neither joint inventorship nor joint ownership are synonymous with joint authorship. Determination of inventorship and authorship are each governed by very different criteria. Authorship is typically attributed in accordance with rules that have evolved through each specific academic field of study.
For further information about ownership and inventorship of patentable intellectual property, please consult TEC Edmonton.