SIMoN
FRASER UNIVERSITY
OFFICE OF THE VICE-PRESIDENT, RESEARCH
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S.04-47
Memorandum
To: Members of Senate
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FROM: Bruce P. Clayman
Vice-President, Research
SUBJECT: Intellectual Property Policy R30.03
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DATE: April 27, 2004
As you probably know, I held extensive consultations in 2003 on proposed revisions to and
amalgamation of SFU's two somewhat inconsistent policies on intellectual property (IP). The
consultations were around a Discussion Paper which laid out options and solicited responses to
specific questions about applicability and revenue sharing.
After considering input received and consulting within the senior administration, I completed the
first draft of a new policy, R30.03. That draft was reviewed by UILO staff members and by the
Executive of the SFU Faculty Association. Based on their comments, I revised the draft policy
and held an extensive consultation over the months of February and March 2004. I received a
number of very helpful comments from students and faculty members. I also met twice again
with representatives of the SFU Faculty Association who provided additional helpful input.
The enclosed draft is the result of those consultations. I believe that it is a reasonable compro-
mise between and among a number of interests.
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The proposed R30.03 is based primarily on our two present Intellectual Property Policies
(R30.01 on copyright and R30.02 on patents), and
• simplifies them,
• makes them consistent with each other with respect to IP ownership, disclosure
and' revenue sharing, and,
• gives explicit recognition to the contributions of the University in facilitating the
creation of the IP.
The changes fully respect academic freedom by giving the creator of all IP the full range of op-
tions for dissemination - from non-commercial publication to for-profit commercialization. They
would also bring SFU into line with the expectations of the federal government's Innovation
Agenda, as expressed by Industry Canada, through requiring disclosure of all commercialization
and encouraging commercialization, to the benefit of the BC and Canadian economies.
I believe that the proposed changes should have wide support, since:
• Consistent treatment is given to all IP, whether exploited via patents, copyright or
other means, simplifying the present situation with its ambiguities
• Copyright would be held by the creator of the IP, not jointly with the University, as
it is at present.
One area that proved controversial is the introduction of a claim by the University on a percent-
age of the annual revenues received by a creator of IP (after the first $25,000 or $100,00) when
she/he commercializes without assistance from the University. There are sound legal and 'phi-
C'BPCDocuncmWo,thmp27pp.døc 27.Ap.04
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Page
losophical' bases for this position, as described in the Policy itself. Basically, I believe that ac-
countability to the public requires return on the public investment in the resources and facilities
when they make possible substantial commercial success.
The (admittedly low probability) scenario of a creator realizing millions of dollars while the
University gets nothing would be costly to the credibility of the University and the university
system in the eyes of the public and of government. I think of the $14M in revenue received in
2003/4 by Université de Sherbrooke, almost entirely from the extensive licensing of one technol-
ogy. Especially in times of extreme budgetary stress such as these, potential funding from such
sources cannot be ignored.
As you may know, UBC's IP policy mandates ownership by UBC of all IP created by faculty
members, UNBC's gives the university right of first refusal to commercialization via UNBC.
Alberta's, Calgary's and UVic' s require revenue sharing when the creator commercializes with-
out assistance from the University. I have attached a table showing a summary of the treatments
of revenue at a number of Canadian Universities. In the US, the Bayh-Dole Act requires owner-
ship by the university; various approaches to revenue sharing are used with revenue retention by
the university typically in excess of
50%,
after all direct costs of commercialization have been
repaid to the university.
In order to minimize any negative impacts of the revenue-sharing provision at SFU, I am propos-
ing a high "threshold" for requiring revenue sharing: the first $25,000 or $100,000 of annual net
revenue goes to the creator, and the percentage to the University applies only to subsequent net
revenues in that year. This will greatly reduce administrative overhead and other negative ef-
fects, while maintaining the University's right to share in the "big hits" - i.e. very successful
commercializations.
I look forward to discussion of this proposal at Senate.
map27ipp.doc
27-Apr-04
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Draft for Discussion
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SIMON FRASER UNIVERSITY
April 27, 2004 ?
Policies and Procedures
Proposed
SUBJECT: INTELLECTUAL PROPERTY POLICY
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R 30.03
1. PURPOSE
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1.1. ?
To provide an incentive for intellectual development and innovation by University
Members;
1.2. To acknowledge that the University has an obligation, within a framework of respect for
copyright and patent principles, to disseminate the products of scholarly activity to benefit
the institution, the individuals affiliated with it, and the public;
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1.3.
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To provide safeguards for the equitable protection and disposition of proprietary rights;
1.4. To provide a framework for effective development and utilization of discoveries for the
economic benefit of British Columbia and Canada which would be in the interests of the
public and the University;
1.5.
To provide the potential for gaining funds to be used to promote and aid research and
technology transfer in the University.
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1.6. ?
To ensure that the University meets its obligations to funding sponsors;
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1.7.
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To assist University Members in fulfilling the terms of grants or contracts with respect to
Intellectual Property (as defined in section 2.1 below); and
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1.8. ?
To simplify and clarify the policy environment by replacing two previous Policies
("Copyright Policy" - R30.01 and "Patent Policy" - R30.02) with one consistent approach
under policy.
2. DEFINITIONS
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2.1. ?
"Intellectual Property" (herein abbreviated as "IP") is the result of intellectual or artistic
activity, created by a University Member in a scholarly, professional or student capacity,
that can be owned by a person. Specifically, this includes inventions, publications
(including scholarly publications), educational materials, computer software, works of art,
industrial and artistic designs, as well as other intellectual property rights (creations) that
can be protected under legislation including, but not limited to patent, copyright or trade-
mark, integrated topography, industrial design laws, and/or through a trade secret.
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2.2. ?
"Creator" means initiator and developer of the IP. To be considered a Creator, an
individual must be considered to be a creator of the IP pursuant to the relevant law, for
example, and inventor pursuant to the Patent Act, or an author or co-author pursuant to the
Copyright Act. It is recognized that collaborative or co-operative effort may involve
several Creators.
2.3.
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"University Resources" include but are not limited to the University's physical structures,
research laboratories, capital equipment, technical facilities, services and personnel.
University services include the administration of funds received by the University in the
form of grants, contracts or other support provided by the University or external sponsors.
2.4. ?
"Publication" means making IP available to the public by way of speech, print, paper,
electronic or other means.
2.5.
"Revenue" means the amount received by the Creator(s) derived from the
Commercialization of IP, net of his/her expenses (which may be carried forward from year
to year to offset gross revenue) incurred in the Commercialization, and includes, without
limitation, proceeds from royalties, profit-sharing, lump sum payments, and sale of equity
shares, but does not include the financing of research projects sponsored by a partner as
part of a continuing program of collaborative research or the funds referred to in paragraph
9.6. ?
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2.6. ?
"Direct Costs" means the University's costs and fees (including legal fees and agents' fees)
associated with the acquisition, management and Commercialization of the IP, including
costs of evaluating it, obtaining and maintaining IP protection, preventing unauthorized use
or infringement, prototype development funds, negotiating and implementing licenses or
other agreements with third parties, but does not include the University's research, office or
overhead costs incurred prior to the initiation of Commercialization.
2.7. "Commercialization" means the assignment, licensing, manufacturing or production of IP
as well as the protection of IP, including, but not limited to obtaining patent protection and
copyright registration, with the goal of financial return.
2.8 ?
"University Member" means a member of the University committee, and includes
University employees, students, post-doctoral fellows, and research grant employees
affiliated with the University and who use facilities, resources or funds administered by the
University in the course of University-related research and other creative activities.
3.
PRINCIPLES
11. ?
The B.C. University Act gives the University the power to require, as a term of
employment or assistance, that a person assign to the Board of Governors "an interest in an
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30.03 ?
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invention or an interest in a patent, copyright, trade mark, trade name or other proprietary
right resulting from an invention made by that person using the facilities, equipment or
financial aid provided by the board, or made by that person while acting within the scope
of the person's duties or employment, or resulting from or in connection with the person's
duties or employment as an officer or employee of the university."
3.2. The Canadian Copyright Act provides for the ownership of copyright to be vested in the
employer when works are created in the course of employment except where agreement to
the contrary exists.
3.3. However, the University's commitment to the open exchange of ideas and the publication,
dissemination and communication of the results of scholarly activity is best served by the
following principles:
3.3.1. University Members who create Intellectual Property own the products of their
intellectual endeavours and are free to publish those products without commercial
intent, to pursue Commercialization with the assistance of the University, or to
pursue Commercialization of the Intellectual Property in their own right.
3.3.2. Because of the University's unique role in the creation and dissemination of
knowledge, products of intellectual endeavour should be used for the greatest
possible public benefit. Intellectual Property produced solely in anticipation of
profit is incompatible with University scholarly and research activity.
3.3.3. The University retains a royalty-free perpetual right to use for scholarly, academic
and other non-commercial purposes all Intellectual Property created through use of
University resources.
3.3.4. Any Intellectual Property created through use of University resources and then
commercially exploited is subject to exercise of the University's right to share in
the Revenue earned from such Commercialization of the Intellectual Property.
33.5.
The University has the right to require the Creator of IP to disclose the intention to
Commercialize that IP because of the University's responsibility to be accountable
to government and the public.
4.
APPLICABILITY
4.1. ?
This policy applies to all University Members, including employees and other individuals,
including students, post-doctoral fellows and research grant employees, affiliated with the
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University who use facilities, resources or funds administered by the University in the
course of University-related scholarly and creative activities.
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4.2. ?
This policy does not apply to IP created in the course of non-University activities that do
not make use of facilities, resources or funds administered by the University, for example
outside employment or other activity in an area unrelated to University activities, or
activity conducted wholly while on an unpaid leave of absence away from the University.
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4.3. ?
This policy does not apply to IP created by individuals not affiliated with the University
but whose IP is used by University Members.
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4.4.
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Other University Policies that are relevant to this Policy are the Policy on External
Research Grants and Contracts (RlO.Ol), the Code of Ethics (A30.01), the Policy on
Service Contracts (AD 3-13), the Policy on Outside Activities (A30.04) and the Policy on
University Trade-Marks (GP 28).
5.
OWNERSHIP
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5.1. ?
Although the University has the right to require assignment of an interest in IP created by a
University Member through the use of its resources, the full ownership of IP and all rights
pertaining to ownership are vested in the Creator, unless the Creator has entered into an
agreement with the University to the contrary. The following exceptions apply:
5.1.1.
The University owns IP resulting from work specifically requested of a University
Member, by the University pursuant to a written contract of employment. This
includes information brochures, commissioned studies or descriptive handbooks,
whose production has been initiated at the request of the University.
5.1.2.
The University owns IP resulting from the performance of a written contract for
service, agreement or commission in which the University and the Creator have
agreed to the University's ownership. This may include products prepared for
distance education and/or continuing education courses and purchased outright by
the University; and other types of teaching or research-related materials, production
of which is initiated at the request of the University. The Creator of products
prepared for distance education and/or continuing education courses may request
the consent of the University to use agreed extracts from the written or recorded
materials for other purposes, including the preparation of textbooks. Ownership of
the resultant products shall be determined by negotiation between the University
and the Creator.
5.1.3.
The University or a sponsoring agency may own the rights to IP developed in the
course of sponsored research pursuant to a written contract.
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5.2. ?
The University specifically acknowledges that the substance of a lecture, whether delivered
in the classroom or via other means, belongs to the lecturer and that records of such
lectures do not constitute IP under the terms of this Policy. The University will distribute
records of such material to University Library cardholders only with the permission of their
Creator.
5.3. ?
The University specifically acknowledges that IP created in the form of a textbook,
instructional website, or other instructional material developed as part of the normal course
teaching activities of a faculty member is owned by the Creator.
5.4. ?
The University specifically acknowledges that IP created exclusively by a student Creator
in the course of completing the requirements for an academic degree or certificate is owned
by the student Creator, to the extent that the IP comprises part of the requirements for the
degree or certificate. In order to qualify under this paragraph, the student and the
supervising faculty member must agree in writing that the student is the sole inventor or
author, as the case may be, pursuant to the relevant IP law. Consistent with SFU Graduate
Regulations, nothing in this Policy shall preclude a graduate student from publishing
his/her thesis in any form at any time.
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5.5.
The Creator of IP may voluntarily assign or transfer any interest in the IP to the University.
The University, at its discretion, may accept such assignment or transfer and thereafter may
transfer or license its ownership or interest to others, including the Creator.
5.6. ?
The Creator of IP may assign or transfer his/her interest in the IP to the public domain or
transfer that interest to another entity.
6. COMMUNICATION AND DISSEMINATION
6.1. ?
The University has a strong interest in maintaining complete academic freedom and the
unrestricted dissemination of knowledge and information produced by members of the
University community. However, Creators of IP should be aware that publication may
introduce deadlines for proprietary protection of IP, for example, in filing patent
applications.
6.2. The University wishes to encourage faculty and other University Members to publish the
findings of their research and wishes to prevent unnecessary restrictions on such
publication. The University therefore encourages its members to avoid contractual
arrangements which unduly restrict the freedom of publication. Note that SFU Policy
RI 0.01 prohibits secret research.
6.3. ?
Creators retain their traditional right to determine, within reason, the timing and nature of
publication of research results.
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6.4. The University will obtain the consent of the Creator before entering into third-party
agreements which would preclude or restrict the Creator's ability to communicate the
results of research.
6.5.
IP often results from collaborative or co-operative efforts among academic staff, students,
other University Members, and external entities. In such cases, the Creators are encouraged
to discuss the handling of IP issues with staff of the University/Industry Liaison Office
(UILO) and/or the Office of Research Services (ORS) and/or the Office of the Dean of
Graduate Studies. Reference should be made to the University's External Research Grants
and Contracts Policy (R 10.01) and other relevant university Policies and Regulations. If
Commercialization is anticipated and there is more than one Creator, a written agreement
among the Creators should be concluded as early as possible and before negotiations for
Commercialization are commenced with third parties. When students or other supervised
persons are involved, the supervising person is obligated to inform the students or other
supervised persons of the intent to Commercialize and inform them that the UILO will
advise them of all relevant polices, with the goal of achieving arrangements that are fair
and equitable.
7.
DISCLOSURE AND COMMERCIALIZATION
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7.1. ?
Creators are free to Commercialize their IP without involving the University in the
Commercialization process.
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7.2.
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Any Creator who elects to Commercialize his/her IP must disclose the intention to the
University as provided for in paragraph 8.2. Ideally, this would occur at as early a stage of
development as possible, as described in more detail in Section 8 and the attached
Appendix B. Disclosure is required because of the University's responsibility to be
accountable to government and the public, as part of its legitimate interest in being
informed of the activities of its faculty, staff and students in this area; because of possible
University obligations regarding contract research and IP; and because the University will
wish to exercise its right to a share of the Revenue earned from Commercialization of the
IP. In this manner, the University shall also ensure that it has the opportunity to offer its
services through the UILO as the vehicle for Commercialization. In order to ensure
eligibility for patent protection, the disclosure of patentable IP should be made as soon as
reasonable after the decision to Commercialize the IP has been made.
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7.3. ?
Creators are assured of confidentiality of proprietary and business information when
disclosing IP and Commercialization plans to University personnel, including staff of the
UILO, the ORS, and the Vice-President, Research. Similarly, Creators shall not disclose
proprietary or business information of the University.
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7.4. In accordance with the University Trade-mark Policy (GP-28), Creators must consult with
and obtain the approval of the University (via the UILO) before using the University's
name, crest, facilities or resources in connection with any commercial arrangement.
8. COMMERCIALIZATION PROCEDURES
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8.1. ?
Detailed Procedures will be found in Appendix B to this Policy.
8.2. A Creator who elects to Commercialize his/her IP must disclose such election in writing, as
appropriate, to the Chair/Director of the Department/School (for faculty members - see the
exception to this in the next section), supervisors (for other employees), or faculty
supervisor (for students), who will then forward the information to the Vice-President,
Research via the UILO.
8.3. A faculty member who wishes to Commercialize his/her IP without the assistance of the
University may make disclosure via the annual reporting that is required under Outside
Activities Policy A 30.04. In this case, the information will be conveyed to the Vice-
President, Research by the office of the Vice-President, Academic.
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8.4. ?
In all cases, the Vice-President, Research will determine whether the research or activity
connected with the IP involves any obligations, patent or otherwise, to an outside sponsor
or to the University.
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8.5. ?
If the Vice-President, Research determines that the IP rights do not belong exclusively to
any external agency or to the University, he/she will inform the Creator of the University's
services regarding Commercialization of IP as provided for in Appendix B.
8.6. The Creator may choose to pursue Commercialization alone, request the University's
assistance in commercializing, or decide not to proceed with Commercialization of the IP.
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8.7. ?
Should the Creator choose to request University assistance, the Vice-President, Research
will determine within 2 months of receiving the request for assistance in commercializing,
whether an investment of University resources in Commercialization is warranted. If the
University declines to invest, the Creator may pursue Commercialization alone. If the
Vice-President, Research decides that the University should proceed, the Creator will be
required to make an assignment to the University of all rights in and to the IP. Following
any such assignment, the University will commence Commercialization activities and
commence obtaining protection of the IP within six months of receipt of the assignment or
it will assign the rights back to the Creator. If the University fails to make reasonable
efforts to Commercialize the IP for any six month period of time, the University will assign
its rights back to the Creator, if so requested by the Creator. The University must give
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reasonable notice to the Creator, and in any case, notice of not less than one month, if the
University decides that it will not pursue or maintain the protection of IP.
9.
REVENUE SHARING
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9.1.
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In fulfilling its role as a research and educational institution, the University strives to
provide incentives for the pursuit of research and creative activities. Revenue sharing is
one such incentive. This article sets out the principles governing the sharing of Revenue
accruing from IP Commercialization.
9.2. The University has the right to share in Revenue obtained from commercializing IP
developed through use of University resources. The University supports the principle that
the Revenue accruing from IP should be shared fairly and proportionately between the
Creator(s) and the University, in relation to the contributions of the University and the
Creator(s).
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9.3. ?
If the Creator elects to Commercialize his/her IP without using the University's services for
this purpose and Revenue from the Commercialization is substantial, the University will
assert its right to a share of the proceeds. Appendix A will be used to determine equitable
sharing of Revenue between the University and the Creator.
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9.4. ?
If the Creator elects to Commercialize his/her IP using the University's services for this
purpose and the University agrees to Commercialize the IP, the Creator will make an
assignment to the University of all rights in and to the IP (as per article 8.7 above) and the
University and the Creator will conclude a Revenue-sharing agreement. Appendix A will
be used to determine equitable Revenue sharing between the University and the Creator.
9.5.
For the purposes of determining Revenue, either the University or the Creator may require
the other to provide an accounting of all funds received and expenses incurred with regard
to IF covered by this Policy.
9.6. Speakers' honoraria, reimbursement of travel expenses or out-of-pocket expenses, and
similar payments received by the Creator in the course of the normal dissemination of
knowledge are not considered Revenue for the purposes of this Policy.
10.
USE OF UNIVERSITY'S REVENUES
10.1. The University's share of Revenue from Commercialization of IP shall be administered
under the authority of the Vice-President, Research and shall be used to further
Commercialization of University IP.
11. IMPLEMENTATION
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11.1. The Vice-President, Research has executive responsibility for implementing this Policy
and will be the final decision authority on behalf of the University for any
commercialization agreements entered into under this Policy.
11.2. IP that was created prior to the approval of this Policy will be subject to the Policies in
place at the time of the creation of the IP ("Patent Policy" - R30.01 and "Copyright Policy"
- R30.02).
12. RESOLUTION OF DISPUTES
12.1. If a dispute arises among Creators regarding their relative contributions to the creation of
IP and this cannot be settled by the individuals involved, the advice and assistance of the
Faculty Dean or administrative equivalent should be sought.
12.2. Disputes between the Creator(s) and the University regarding the provisions of this Policy
which cannot be resolved through informal consultation will be decided with reference to
the formal procedures outlined in the appropriate agreement between the relevant
employee group and the University, or the appropriate set of University Policies or
• ?
regulations governing the University constituent group of which the Creator(s) is a
member. In situations not covered by existing agreements or Policies, the University and
the parties involved will agree upon a dispute resolution mechanism.
12.3. Where the relationship between the Creator(s) and the University may be governed by
more than one agreement or set of Policies or regulations owing to multiple activities of the
Creator(s) within the University, then that agreement or set of Policies or regulations which
relate to the primary status of the Creator(s) will apply for purposes of actions under this
article.
13.
INTERPRETATION
13.1 With respect to members of S.F.U.F.A., Section 14.1 of the Faculty Association?
Framework Agreement deals with matters of interpretation of this Policy.
13.2 With respect to other persons, questions of interpretation or application of this Policy shall
be referred to the President, whose decision shall be final.
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APPENDIX A
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INTELLECTUAL PROPERTY POLICY ?
REVENUE-SHARING AGREEMENTS
The following approaches to Revenue sharing with the University will be used to determine equitable
distribution of Revenue, taking into consideration the normal use of University resources and any
additional financial or other contributions by the University to the Commercialization endeavour. Dollar
values below may be revised from time to time by the Office of the Vice-President, Research to apply to
subsequent Revenue-sharing agreements. Exceptions may be made, under the authority of the Vice
President, Research, based on above-normal or below-normal use of University resources and additional
financial or other contributions.
commercializing
A:
If the Creator retains
the IP,
ownership
the University
of the
will
IP
normally
and does not
receive
request
15%
the
of
assistance
additional
of
annual
the University
Revenues
inreceived
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5
by each of the Creator(s), after $25,000 in annual Revenue has been received that Creator, based on the
provision of general University resources and facilities including (possibly) minor UTLO staff assistance;
assignment of the IP is not required.
or
B:
If the Creator(s) requests assistance of the University in commercializing the IP and the University
agrees to assist, then - after the Direct Costs of Commercialization are repaid from Revenue on a
50:50
shared basis - the University will normally retain 30% of annual Revenue.
or
C. If the Creator requests assistance of the University in commercializing the IP and the University
declines to assist, or the University abandons the Commercialization of the IP and assigns the IP back to
the Creator pursuant to paragraph 8.7, the University will normally receive 5% of additional annual
Revenues after the first $100,000 in annual Revenue has been received by each of the Creator(s), based on
the provision of general University resources and facilities including (possibly) minor UILO staff
assistance; assignment of the IP is not required. ?
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In the case of joint Creators, the above annual "threshold" amount before which Revenue is shared applies
to each Creator separately.
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APPENDIX B ?
INTELLECTUAL PROPERTY POLICY ?
COMMERCIALIZATION PROCEDURES
1.
A Creator who elects to Commercialize his/her IP must disclose such election in writing, as follows:
I.I. Faculty members: ?
to the Chair/Director of the Department/School
1.2.
?
Librarians: ?
to the University Librarian
1.3. ?
Other employees: ?
to the Director of the Unit
1.4. ?
Students: ?
to the faculty Supervisor or Chair/Director of the Department/School
2.
Disclosure will use the Intellectual Property Disclosure Form, Appendix C to this policy. It is
available at www.sfu.ca/uilo/disclosureform.doc
or at the UILO in Strand Hall on the Burnaby
campus, at the TIME Centre at the Harbour Centre campus, or at the UILO on the Surrey campus. See
section 4 below for possible exception relevant to faculty members
3.
The recipient of the Disclosure Form (as above) will then forward the information to the UILO for
consideration by the Vice-President, Research.
4.
A faculty member who wishes to Commercialize his/her IP without the assistance of the University
may make disclosure via the annual reporting that is required under Outside Activities Policy A 30.04.
In this case, the information will be conveyed to the Vice-President, Research by the office of the
Vice-President, Academic.
5.
The Vice-President, Research, in consultation with the Office of Research Services and the UILO,
will determine whether the research or activity connected with the IP involves any specific
obligations, patent or otherwise, to an external sponsor or to the University.
6.
If the Vice-President, Research determines that the IP rights do not belong exclusively to any external
agency or to the University, he/she will inform the Creator of this and of the University's services
regarding Commercialization of IP. Services are provided primarily via the UILO and include but are
not limited to:
6.1. ?
Assessment of the potential for Commercialization of the IP
6.2. ?
Assessment of opportunities, risk and responsibilities related to Commercialization
6.3. Advising on Commercialization partnerships and pathways
6.4. ?
Partnering researchers with industry and government for collaborative research and
development
6.5. ?
Providing advice on and support for IP protection
6.6.
?
Funding prototype development
6.7. ?
Identifying funding partners to Commercialize university technologies
6.8. ?
Assisting with the creation of new ventures through advice on business planning, legal
matters and capital acquisition.
R
30.03 ?
Intellectual Property Policy
?
R
30.03
Pa2e 12of14 ?
DRAFT5-Mav2O.2004 ?
Pafle 12of14
.
Proposed Policy R30.03
SUBJECT: INTELLECTUAL PROPERTY
7.
The Creator may then choose to pursue Commercialization alone, may request the University's
assistance in commercializing, or may decide not to proceed with Commercialization.
8. Should the Creator choose to request University assistance in Commercialization, the Vice-President,
Research will determine within two months of receiving such a request whether an investment of
University resources such as those described above is warranted by the probabilities for successful
Commercialization.
9.
If the Vice-President, Research decides that the University should proceed, the Creator will be required
to make an assignment to the University of all rights in and to the IP concomitant with concluding a
Revenue-sharing agreement. Appendix A to this Policy will apply to the Revenue-sharing agreement.
Creators are encouraged to have their own lawyer review the written agreement prior to conclusion.
10.
Following assignment, the University will commence Commercialization activities within six months
of receiving the assignment or will assign the rights back to the Creator. If the University declines to
invest and thus assigns the rights back to the Creator, the Creator may pursue Commercialization
alone. If the University fails to make reasonable efforts to Commercialize the IP for any six months
period of time, the University will assign its rights back to the Creator, at the request of the Creator.
r
R 30.03 ?
Intellectual Property Policy
?
R
30.03
Pae13of14 ?
DRAFT 5-Mav2O.2004 ?
Pa2e13of14
Proposed Policy R30.03
SUBJECT: INTELLECTUAL PROPERTY
.
APPENDIX C
COMMERCIALIZATION DISCLOSURE FORM
[to be developed after approval of the Policy]
.
S
R 30.03 ?
Intellectual Property Policy ?
R
30.03
Pa g
e 14 of 14
?
DRAFT 5 - Ma y
20.2004
?
Page 14 of 14
University Intellectual Property Policies
Compiled by B.P. Clayman
.
?
April 27, 2004
.
Copyright
Patent
University
Ownership
of IP
Revenue to
University
if Comm.
by Creator
Revenue to
University
if Comm.
by
University
Ownership
of IP
Revenue to
University
if Comm.
by Creator
Revenue to
University
if Comm.
by
University
SFU
Present
Joint
Negotiated
Negotiated
Creator
0%
20%'
SFU
Proposed
Creator
15%2
30%'
Creator
15%2
30%'
Victoria
Creator
20%
Negotiated
Creator
20%3
Negotiated
UBC
Creator4
0%
0%
University
Negotiated
50%
UNBC
Creator
0%6
0%6
University
Negotiated
Negotiated
Alberta
Creator
5%7
5%7
Creator
33.33%
66.67%
Calgary
Creator
10%-25%
50%
Creator
10%-25%
50%
Sask.
Creator or
Joint
050%8
0..50%8
Negotiated
Negotiated
Negotiated
Toronto
Creator
25%10
75%910
50:50
Joint
25%h1,12
75%
McGill
Creator 13
o%13
Ø%13
Joint14
20%
15
35%
Dalhousie
Creator16
90%6
90%16
Creator
50%
50%
Sherbrooke
Joint
50%
50%
Joint
50%
50%
Waterloo
Creator
0%
0%
Creator
0%
0%
Manitoba
Creator
17
0%
0%
Joint
Negotiated
Negotiated
McMaster
Joint or
Creator'8
0%-50%
0%-50%
Urnver-
sity
19
5% of gross
or 25% of
net
25%
or
Queen's
Creator
0%
0%-50%21
Creator
25%
60%
Ottawa
Creator
Ø%22
20%23,24
University
0%
20%2324
Notes:
After 50:50 repayment of costs of commercialization
2
After first S25.000 per annum go to the creator; if IP is offered to the University for commercialization and the
. ?
University declines,
5%
of Revenue goes to the University after the first $100,000 per annum go to the creator.
' If revenue is above $5,000 per annum
Creator owns "Literary Works" - other copyrightable work (e.g. software) is treated under patent policy
D., ?
1
,ci
University Intellectual Property Policies
?
Compiled by B.P. Clayman
?
April 27, 2004
Joint if significant university resources were used
6
0% unless significant university resources were used, in which case, negotiated
7
After repayment of costs of production
8
0% on material that is exclusively owned by creator
Patent rules apply to computer software
If created through substantial use of university resources
"After the first $1,000 (in 1990 dollars) are paid to the creator
12
10% if the University assesses invention and then decides not to proceed with commercialization
13
Software is jointly owned and is treated according to the Patent Policy
Joint unless creator assumes all costs of managing I? in which case the creator has ownership
15
20% on the first $100,000 and
35%
on the rest
16
Patent rules apply to computer software
Except audio and video recordings, for which ownership is joint and revenue sharing occurs
Patent rules apply to computer software; other copyright ownership depends on use of University resources
19
Creator may request that ownership be transferred and approval will not be unreasonably withheld
20
Depending on the ultimate uses of the funds
21
For software only
22
Applicable only if the University declines to commercialize
23
After repayment of full costs of costs of commercialization
2450%
once total Revenue is over $100,000 and in the case of equity sharing in a spin-off
.
.
.
p.,n')
