At this time (December 2006), NSAC itself does not have an intellectual property
policy. Instead, it follows the policy of the Province of Nova Scotia. This
policy states that intellectual property created during the normal course of
business by faculty and staff of NSAC, as employees of the university and therefore
the province, (and contractors working for NSAC) is owned by Her Majesty the
Queen in right of Her Province of Nova Scotia (the Crown).
A policy is in the process of being developed specifically
for NSAC but, for the time being, NSAC follows the Province
of Nova Scotia policy. The current IP policy statement is found here.
The following information is provided to inform researchers,
students and industry partners on the basics of intellectual
property. Those seeking clarification and more information
are encouraged to meet with the Industry Liaison Office.
- What is Intellectual Property?
“A GUIDE TO PROTECTING INTELLECTUAL PROPERTY” can
be found here (this
link will open a new window and take you the University of
Toronto resaerch office)
Note: the information in this section is adapted from information
at the University of Waterloo Technology Transfer and Licensing
Office.
The phrase "intellectual property" broadly speaking
refers to rights to the "intangible" elements of
certain types of property. Property can include both physical
(tangible) and intangible aspects each of which can possess
economic value independent of the other. Both the tangible
and intangible elements of intellectual property can be sold/assigned/transferred
either separately or as a whole. For example, consider a book
- one party can own the tangible property - the book, and another
the intangible property - copyright in the contents of the
book.
Traditionally, "intellectual property" consists
of property which can be protected by patents, trademarks/names,
industrial designs, copyright, and trade secrets/confidential
information. More recent additions include: intellectual property
rights provided by the Plant Breeders' Rights Act/Plant Protection
Act and the Integrated Circuit Topographies Act. For the most
part, intellectual property is a creature of statute. The most
notable exceptions are trade secrets/confidential information
and to some extent, trademarks and trade names which are subject
to common law provisions in Canada and other similar jurisdictions.
An example of the broad range of intangible and tangible aspects
of "intellectual property" is the common television
set. A television set can be protected by virtually all of
the various types of intellectual property: patent on picture
tube, trademark/name - to identify the manufacturer, industrial
design - shape or style of television set, manual/instructions
- copyright, trade secret - chemical composition of phosphorus
and circuitry - by the Integrated Circuit Topography Act.
At most universities, "intellectual property" protected
by patents and copyright represent approximately 95 per cent
of all the intellectual property created. Intellectual property
protected by trademarks, plant breeders' and integrated circuit
topography legislation is created but represents only a small
portion of all the intellectual property created.
- Who are the "creators" of intellectual
property?
Most research projects include a variety of individuals who
fall into the following general categories: inventors, authors
and contributors.
In general, research work involves a number of participants
[researchers, lab assistants, analysts, technicians, etc.]
all will in some manner be contributors to the research project
but only some will be inventors and/or authors.
For the most part, the creators of intellectual property fall
within the realm of patent and copyright legislation. As a
result, the ILO is primarily concerned with identifying persons
who qualify as inventors or authors. It is fundamental and
critical to properly identify the "real" inventors
since failure to identify all of the proper inventors or incorrectly
including persons as inventors can invalidate a patent if fraud
or deceit is involved. A simple error can however be corrected.
Patenting is expensive and issues of inventorship usually arise
downstream when considerable costs have been incurred to patent
the intellectual property which often coincides with the time
when it is becoming apparent that patented technology has a
substantial market value. The last thing anyone wants is to
learn that a patent may be invalidated due to a misjoinder
or a non-joinder of the proper inventors. Not only will a substantial
amount of money have been wasted on an invalid patent but all
hope of commercially exploiting the patent may be lost.
- Who are the "Owners" of intellectual
property?
- Creators - Inventors/Authors (Re: Patents & Copyright)
Inventors:
In basic terms, every person is an inventor of intellectual
property who conceives, or participates in conceiving, the
inventive idea. Conception of an invention generally means
the generation and disclosure of a complete idea such that
it can be reduced to practice (constructed) without further "undo" experimentation.
Those who have provided encouragement, helping hands or who
may have just been a member of the research team are not
inventors and must not be identified as inventors. Co-inventors
are all equal since the patent legislation does not evaluate
or rank their respective contributions. They can of course
differentiate their relative contributions but share benefits
(royalties, etc.) unequally.
Authors:
The Canadian Copyright Act provides a definition of an author
as the person or persons who "creates" work (writes
a novel or text, writes software code, paints a picture,
takes a photograph, records a song, etc.). Both multiple
authors and joint authors can exist. Multiple authors arise
in situations where a text or software has various sections
or portions created by different persons. Joint authorship
implies that the contribution of one author and another are
not distinct from each other and therefore cannot be divided
into two or more independent parts. For example, a close
collaboration to write a mystery novel or a software program
can result in a joint authorship situation. Writing different
chapters of a novel or textbook or writing separate modules
of a software program will result in the existence of multiple
authors.
If commercialization is to be successful, it is critically
important to accurately identify all proper inventors and authors
in order to be able to effectively license the intellectual
property or transfer it to a start-up company. There can be
serious and expensive legal repercussions if unidentified inventors
and/or authors turn up and demand a share of the revenues arising
from commercialization of the intellectual property. A further
complication arises with funding parties who although not qualifying
as an inventor or author may have significant rights to intellectual
property created using their money. If researchers fail to
understand the need to carefully identify authors or inventors,
or permits so many individuals to collaborate in the creation
of intellectual property, or accesses many different funding
sources to pay for the research which leads to the creation
of the intellectual property, they may find that when it comes
time to commercialize it, the intellectual property has little,
if any, market value.
Subject to agreements which the creators may have signed and
other statutory and common law requirements, the original owners
of intellectual property are its creators.
- Employers
Generally speaking, employers, such as NSAC, own the intellectual
property created by their employees performing work in the
course of their employment. Employers usually require that
employees sign an agreement to this effect to avoid any issues
of ownership arising at a future date when an employee creates
intellectual property. The phrase "in the course of
their employment" generally means work and resulting
intellectual property developed while undertaking tasks that
fall within their job description or that reasonably may
be considered to be essential to the work and services they
were providing to their employers. Questions of interpretation
often arise and the result will usually be determined by
the fact situation at hand.
University researchers should always be quite certain to ensure
that individuals they hire to perform research related activities
sign an agreement with NSAC which clearly allocates ownership
of intellectual property to the university. If the person being
retained is a consultant, a similar procedure should be followed.
If an agreement assigning all intellectual property rights
of employees or consultants to the university is not obtained,
these rights may prevent, or at a minimum seriously complicate,
future efforts by the researchers or the university to commercialize
intellectual property developed in a research project.
- Funding Sponsors
Any person, corporation or government agency or department
which provides funding for a research project may demand
specified intellectual property rights in return for making
the funds available.
It is of paramount importance that researchers employing such
funds fully understand any intellectual property rights which
may accompany the funding. Failure to do so may result in difficulties
when attempting to protect /commercialize the intellectual
property or may result in little or virtually no potential
for the researchers to benefit from commercialization revenues.
Principal Investigators also have a clear obligation to inform
researchers working on projects which are in whole or in part
supported by sponsor funding of the sponsor rights associated
with the funding and to fully inform the researchers that their "creator
ownership" rights may be significantly impacted by pre-existing
sponsor rights to intellectual property developed under the
research project.
- What are the different "types" of intellectual
property rights?
- Ownership Rights
Ownership is the highest form of control one can exercise
over any type of property, including intellectual property.
Ownership
in fact consists of a bundle of many rights which together
comprise the concept of being an owner. For example, ownership
includes the following rights among many others:
- licensing rights - split up between territories and fields
of use
- assignment rights (right to transfer/sell ownership)
- security rights (right to mortgage or encumber ownership
to borrow funds)
- right to patent/copyright
- right to sue for infringement
- the right to commercialize the intellectual property
These rights can be divided up by the owner in many ways and
result in a variety of different parties deriving particular
rights in specified circumstances. For example, the intellectual
property may be exclusively licensed to several parties in
each of the territories where it is patented. In such circumstances
each party is distinguished from the other by virtue of territory
and/or field of use. In fact, the owner of intellectual property
could sell the patent and transfer all ownership rights to
another party in one particular territory and retain ownership
of the patents in all other territories. Any number of other
variations on subdividing the bundle of owner rights to intellectual
property are possible. The variations are in fact virtually
limitless.
Note that ownership of intellectual property developed by
faculty and employees of NSAC is vested in the Crown according
to the Intellectual Property policy of the government of Nova
Scotia (see section 1).
- Commercialization Rights
Ordinarily the owner of intellectual property retains the
commercialization rights and undertakes all the necessary
activities to commercialize
the intellectual property. However, commercialization rights
are only one of the rights in the bundle of rights retained
by an owner. It is possible for the owner to license or contract
away the commercialization rights to another party. This
does not mean that ownership has been transferred but rather
only the right to undertake commercialization of the intellectual
property. The commercialization right is none-the-less an
important right since, if the recipient of this right does
not actively pursue commercialization, it will have a major
negative impact on the revenues flowing back to the owner.
The analogous situation would be to entrust an investment
manager with your money and find that, although the money
is not lost, the investment manager does little to make it
grow and increase in value. The asset, whether money or intellectual
property, is therefore not fully exploited and is effectively
wasted.
- License Rights
The right to license intellectual property is a very important
right included in the bundle of rights which comprise ownership.
A license basically permits another person to do what otherwise
he or she could be lawfully prohibited from doing. For example,
without a license to use an invention which is patented,
the person so doing would be liable for damages arising from
infringing the patent in question. The variety of licensing
arrangements, exclusive/non-exclusive, territory, field of
use, payment of royalties, etc. is virtually limitless and
generally requires the expertise of a professional skilled
in understanding licensing arrangements and in the art of
negotiation. It is a critical right and if improperly or
inadequately exercised can severely reduce the value of the
intellectual property licensed.
