Intellectual Property Policy

Summary

A clearly defined intellectual property policy protects researchers, drives discovery and encourages further research in various fields.

Western University's WORLDiscoveries®, one of Canada’s leading commercialization centres, oversees our intellectual property policy, which is built on the principle that intellectual property is creator owned.

Intellectual Property Policy*

Applies to all intellectual property created by a member (student, faculty, librarian, archivist or staff) in the course of employment, academic studies, or using University resources.

  1. Intellectual property is creator-owned for students, faculty, librarians, archivists and postdoctoral scholars. Intellectual property is University-owned for staff.
  2. Intellectual property developed by a member who wishes to exploit it for commercial gain shall disclose it to the University through WORLDiscoveries.
  3. Creators (excluding staff) can choose to assign to the University or commercialize on their own.
  4. If assigned to the institution, net revenue is shared between the University and creators.

*See MAPP 7.16 for full policy.

WORLDiscoveries 2018 by the Numbers

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WORLDiscoveries provides advice and services to the University community to facilitate the protection and commercialization of intellectual property.

We follow a six-step process in turning member innovations into profitable consumer-ready products.

Disclosure. Member to submit a Report of Innovation (ROI) and indicate if they wish to assign or commercialize on their own.

Assessment. WORLDiscoveries assesses the strength of the disclosure’s market potential and determines whether a strategy for intellectual property protection can be put in place.

Protection. If the disclosure is accepted, WORLDiscoveries will proceed with the protection of the intellectual property as appropriate and seek assignment to the University.

Marketing. We promote your innovation through various channels including our website and proprietary match making platforms. We will identify and reach out to potential third party receptors and/or investors with the goal of further research and development, licensing, direct to market or startup.

Agreements. We will legally represent your innovation and prepare and review all agreements related to its commercialization. Compliance. We help to ensure that all parties deliver on the promises made.

Compliance. We help to ensure that all parties deliver on the promises made.

MAPP Policy 7.16 FAQ

How do I know if I need to disclose to WORLDiscoveries?

For Faculty/Librarian/Archivist/Post-doctoral Fellow (Creator-owned)

a. Was the Intellectual Property (IP) created in the course of your employment?

For example:

  1. Did you use, other than incidentally, institutional resources (facilities, equipment, materials etc.) to create the IP?
  2. Are there any agreements with third parties that include Western as a party and relates to the creation of the IP?
  3. Did you receive funding from any third parties that is managed by or held in an account at Western to create the IP?
  4. If applicable, will the IP be considered in your annual performance evaluation?
  5. Will the IP be associated with the name or brand of Western?

If you answered yes to any of the above or are unsure, please go to b. below.

b. Do you wish to exploit the Intellectual Property for commercial gain?

For example:

  1. Are you planning to use the IP to generate revenue? Do you plan to license, assign or sell ownership of the IP to a third party in exchange for something of monetary value (cash, royalties, shares/stocks, etc.)?

If you answered yes to any of a. AND b. above please download the appropriate form from here and submit it to WORLDiscoveries at: ipm@uwo.ca. If you have further questions or are still unsure, please email ipm@uwo.ca.

For Students (Creator-owned)

a. Was the Intellectual Property (IP) created in the course of your academic studies?

For example:

  1. Did you use, other than incidentally, institutional resources (facilities, equipment, materials etc.) to create the IP?
  2. Are there any agreements with third parties that include Western as a party and relates to the creation of the IP?
  3. Did you receive funding from any third parties that is managed by or held in an account at Western to create the IP?
  4. Is the IP a requirement for your degree program?
  5. Will the IP be associated with the name or brand of Western?

If you answered yes to any of the above or unsure, please go to b. below.

b. Do you wish to exploit the Intellectual Property for commercial gain?

For example:

  1. Are you planning to use the IP to generate revenue? Do you plan to license or transfer ownership of the IP to a third party in exchange for something of monetary value (cash, royalties, shares/stocks in a company, etc.)?

If you answered yes to any of a. AND b. above please download the appropriate form from here and submit it to WORLDiscoveries at: ipm@uwo.ca. If you have further questions or are still unsure, please email ipm@uwo.ca.

For Staff (University owned)

a. Was the Intellectual Property (IP) created in the course of your employment at Western?

For example:

  1. Is the IP the result of you performing your roles and responsibilities as outlined in your job description?
  2. Did you use, other than incidentally, institutional resources (facilities, equipment, materials etc.) to create the IP?
  3. If applicable, will the IP be included in your annual performance evaluation?
  4. Are there any agreements with third parties that include Western as a party and relates to the creation of the IP?
  5. Did you receive funding from any third parties that is managed by or held in an account at Western to create the IP?
  6. Will the IP be associated with the name or brand of Western?

If you answered yes to any of the above or unsure, please go to b. below.

b. Do you wish to exploit the Intellectual Property for commercial gain?

For example:

  1. Are you planning to use the IP to generate revenue? Will the IP form the basis of a for-profit company? Do you plan to license, assign or sell ownership of the IP to a third party in exchange for something of monetary value (cash, royalties, shares/stocks in a company, etc.)?

If you answered yes to any of a. AND b. above please download the appropriate form from here and submit it to WORLDiscoveries at: ipm@uwo.ca. If you have further questions or are still unsure, please email ipm@uwo.ca.

How is commercialization defined?

Commercialization refers to all modes of exploiting the IP to generate revenue. Examples include: direct sales of products/services protected by the IP; fees and royalties paid by a licensee in exchange for rights to the IP; and fees obtained for assigning ownership of the IP to a third party, among others.

Can I patent my creation if I have published or presented publicly?

We advise to "protect prior to publish". Public disclosures (i.e. publication, presentation, poster, abstract, marketing materials etc.) can prevent you from obtaining a patent if that disclosure occurs prior to filing a patent application.

Do I need to disclose to WORLDiscoveries if I am publishing or making my material available publicly for free?

No, because there is no commercialization taking place. It should be noted that since publishing may foreclose the possibility of commercialization, if you feel you may be interested in commercializing at some point, it should be determined whether the IP can be protected through statutory means prior to making it public.

Do I need to disclose to WORLDiscoveries created IP if I will receive a monetary award or honorarium related to that IP?

No. You, as the owner of any IP being recognized through an award or honorarium, have no desire to commercialize and the award or honorarium is likely not reflective of the actual value of the IP or the cost to create it.

Do I need to disclose to WORLDiscoveries IP created under a consulting agreement with a third party that provides me with monetary compensation?

It depends.

  1. If the consulting was done on one’s own time with no or incidental use of University resources, then no. You would have signed the consulting agreement as an individual (University would not be a signatory to the consulting agreement). Note that you may still have reporting obligations under the Paid Professional Activities section of the UWOFA collective agreement, if you are a faculty member.
  2. If consulting was done using, other than incidentally, University resources and/or done as part of one’s role and time as a member of University, then yes. Any fee for service agreement is or should be drawn up through Research Development and Services.

Do I need to disclose to WORLDiscoveries before the IP has been created?

No. There is nothing to disclose until the IP has been created and you desire for it to be commercialized.

Do I need to disclose to WORLDiscoveries after I have created the IP but am not planning to commercialize or am not sure when or if to commercialize?

No. You are only obligated to disclose when you are desiring to commercialize. It should be noted that since publishing may foreclose the possibility of commercialization, if you feel you may be interested in commercializing at some point, it should be determined whether the IP can be protected through statutory means prior to making it public.

If you are interested in learning more, please contact WORLDiscoveries (ipm@uwo.ca).

If the IP is developed by a staff member and any other member on campus (student, faculty, librarian or archivist) during their course of employment and they plan to commercialize, would it be jointly owned between Western and the other member(s)?

Yes. Initially that is the case.

Possible course of action:

  1. Western and members commercialize together.
  2. All members (except staff) decide to assign to Western; Western commercializes on behalf of all members.
  3. Staff member requests Western ownership assigned to them; which is then evaluated on a case-by-case basis.

If I am a staff member/author on an article created as part of my employment, can I assign or give rights to a publisher?

It depends.

As the article was created by you as part of your employment responsibilities, the ownership of copyright material belongs to Western. Any agreements regarding the transfer of IP rights has to involve an individual who can assign on behalf of Western.

What is the difference between inventor/author and owner?

  • An inventor is a person who has had an original idea or otherwise contributed intellectual input in a patent. An author is a person who has produced or created intellectual property through artistic or literary means. An inventor/author can also be the owner but not necessarily. The inventor/author will always remain an inventor/author regardless of who the owner is or becomes at a later date.
  • An owner has the right to sell or provide rights to third parties to use the IP. Intellectual property is, in most cases, creator-owned for students, faculty, librarians, archivists and post-doctoral fellows. Intellectual property created by staff as part of their employment is owned by Western unless there is an agreement to the contrary.

How is net revenue shared?

  • For patentable material assigned to Western, net revenue is shared 50/50; copyright is discussed when assigned.
  • When not assigned, for patentable material, inventors are required to remit 15% of the net revenue back to Western.
  • When not assigned, and is computer software, creators are required to remit 7% of the net revenue back to Western.
  • When not assigned, and is computer software developed without the significant use of University resources, creators are required to remit 3% of the net revenue back to Western.