Elements of a Workable Intellectual Property Policy

OPIC IP Roundtable

Noel Courage

Bereskin & Parr

November 21, 2007

University Innovations

generating new knowledge• written works, science

knowledge = intellectual property

University Innovations = IP

written works = copyright• manuscripts, technical drawings, computer

code

science = patents, trade secret• circuits, software, mechanical devices,

drugs, diagnostics

Intellectual Property

copyright is automatic

trade secret protection lasts as long as the secret

patents – have to register (expensive)• most university inventions go into public

domain – no IP

Inventions Policy

encourage capture of small portion of university IP for commercialization

public benefit

set out support structure to help scientists commercialize with university (mandatory or optional)

Rulebook

who is covered - all staff, students? require disclosure of IP to institution assert ownership of institution; option

for return of rights to inventor process for commercialization - licensee

or spin-of company distribution of revenue - fair sharing

encourages commercialization

If No Inventions Policy…

"Common law" provides general principles• employees own their inventions unless hired to

invent• independent contractors – own their inventions

Best to have policy and require new workers to agree to policy at time of hiring

Scope of Policy is Variable

all inventions made in the course of employment

broader add-on: all inventions made using institution resources

Policy Does Not Cover All Research

contracts with research sponsors may alter inventions policy

consulting work for third parties often excluded

inventors and institutions can make own agreement

Success Story

Amorfix (Toronto) diagnostics for prion diseases (mad

cow, CJD), Alzheimer’s, ALS technology developed at university,

hospital Amorfix has partnerships with industry

(Biogen), universities, hospital

Mosaic of IP – Cooperative Relationship

hybrid – multiple institutions and inventors

UofT – institution owns, but inventor can compel reassignment

UHN – institution owns

Ownership

UofT inventors take reassignment of ownership and transfer ownership to Amorfix

UHN retains ownership of its UHN inventor rights – license to Amorfix

Ingredients for Success Under Inventions Policy

early identification of IP at UofT, UHN no public disclosure before patenting assess inventorship and patentability file patent application coordinate timing of publications to follow

patent application filing assign/license ownership promptly research grants, industrial partners

Ingredients for Success Under Inventions Policy

good relationship - ongoing communication with licensor (UHN) to show that Amorfix is in compliance with license terms and making progress in commercialization

new inventions, improvements made outside Amorfix are disclosed to institutions and then Amorfix

Hot Spots to Beware

inventor commercializes and does not disclose to institution

commercialize without proper determination of inventorship

commercialize without filing quality patent application

commercialize without permissions and freedom to operate analysis

Hot Spots

expenses – government fees, attorney fees, consultants

third party liability

inventor does not follow through on research contract obligations

dispute resolution/termination

Hot Spots – Future Research and Collaboration

inventor, licensee or spin off company shelving technology or not paying money

third party getting overly-broad IP rights under research agreement

overbearing confidentiality and non-use clauses clear obligations for when licensors/spin-off

companies have to pay royalty clear rights to terminate upon default or missed

milestones

Applying Legal Aspects of Inventions Policy More Effectively

educate researchers on policy, rights identify and protect IP properly move commercialization, IP and

agreements along efficiently and boldly terminate - don’t throw good money

after bad can't be proactive if have too many

projects

Applying Legal Aspects of Inventions Policy More Effectively

Keep moving up the learning curve on IP and legal aspects – call in support when necessary

Hope for the best, but also think about and prepare for the worst when making agreements to commercialize

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