2000-3-4 Intellectual Property for Research Activities

Policy

Lambton College seeks to encourage creativity, innovation and invention among its faculty, students, and staff. The college invests in this endeavour by making available its own facilities, equipment, personnel, and information resources. The college also actively seeks specific support for creative activity from external sources, both public and private. Frequently, inventions, discoveries, and creative works that are developed by individuals at the college will have commercial and / or scientific and scholarly value. The intent of this policy is to provide incentives that foster creative activity, and to help assure that any intellectual property produced through research and innovation activities will be exploited for the benefit of the creators, the college applied research enterprise, and the public. To help meet these policy objectives, the college makes available, through the Office of Research & Innovation, technical and legal assistance in procedures necessary to protect ownership of intellectual property and to aid in its commercial development.

Purpose of Policy

1. The specific aims of this policy include the following:
   1. Encourage creativity among the faculty, students and staff;
   2. Increase the likelihood that ideas, innovations, inventions, and creative works produced at the college are used to benefit the public; 
   3. Protect the rights of scholars with respect to owning the products of their intellectual endeavours; 
   4. Assure compliance with the provisions of contracts with external sponsors; and provide that, whenever possible intellectual property is introduced for commercial development, the creator(s) and the college share any net profits; 
   5. Outline the process for disclosure of inventions by faculty, students and staff to the college; 
   6. Encourage collaborative applied research projects with external partners and provide guidelines for sharing intellectual property, royalties, licensing agreements etc. with external partners. 
   7. Encourage the commercialization of intellectual property that arises from research and innovation at Lambton College.

Changes to this Policy

1. The college reserves the right to change this policy from time to time. Proposed changes normally will be developed by the Office of Research and Innovation, in consultation with the appropriate stakeholders. Changes to the college’s IP policy are approved by the Academic Excellence Committee, the College Council, the Academic Students Affairs Committee, and the Board of Governors.

Administration of Intellectual Property

1. The Office of Research and Innovation shall be responsible for any matter related to college’s research related intellectual property and shall have the sole authority to negotiate the college's rights under these policies.

Who is Covered?

1. This policy covers college personnel including faculty, administrators, office and technical staff, students, visiting scholars, external partners and all others whose research work affiliation is with the college, whether compensated by the college or not.

What is Covered?

1. All intellectual property produced through a research activity at the college by college personnel, and / or which arises from joint initiatives with outside parties, such as industry or sector partners, are covered by this policy.
   1. What is Intellectual Property?

      Intellectual property (IP) is any form of knowledge or expression created by one's intellect that can be legally protected. In this policy, IP is the product of the act of research, such as: inventions; creative works; technical information; prototypes; drawings; specifications; know-how, software (including source code and object code); industrial designs. Individuals and/or institutions can own IP in the same way they can own physical property. An owner of IP can control and receive payment for its use. IP may be registered (see below), through an appropriate national registry office, affording it a certain level of protection for a period of time (varies by the kind of IP). IP may be licensed (giving someone conditional permission to use the item subject to compensation) or assigned (transferring ownership to another person for compensation).

IP Protection

There are six main types of IP protection under Canadian law: copyrights, industrial designs, integrated circuit topographies, patents, trademarks and trade secrets.

1. Types of IP Protection
   1. Copyrights: Copyrights include, without limitation, all creative works, electronic or paper documents, software (including source code and object code), multimedia or audiovisual materials that may be copyrightable under Canadian law.
   2. Industrial Designs: An industrial design is the features of shape, configuration, pattern or ornament (or any combination of these features) applied to a finished article made by hand, tool or machine. It may be, for example, the shape of a table or the shape and ornamentation of a spoon. The design must have features that appeal to the eye. To be eligible for registration with the Industrial Design Office, your design must be original.
   3. Integrated Circuit Topographies: Integrated circuit topographies are now considered a form of intellectual property. Recognizing the growing impact of integrated circuit technology in virtually all fields of industry, and the need to protect Canadian innovations in this technology both nationally and internationally, Canada has introduced protection for integrated circuit topographies. Topographies are innovative, three-dimensional circuit designs used in many different products. Examples of such products are automobiles, industrial robots, cameras, spacecraft and computers. 
   4. Patents: Patents include, without limitation, all inventions, discoveries, know-how (despite the fact that these may not benefit from patent protection) or other material that is patentable under Canadian law, as well as all software that is excluded from "copyrightable material" (whether or not patentable under Canadian law). 
   5. Trademarks: Trademarks include a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace or any other feature that is considered a trademark under Canadian law. 
   6. Trade secrets: Trade secrets are ideas or know-how (business methods, processes, machines, formulas, patterns and techniques) that are kept secret from one's business competitors.

Ownership of the Intellectual Property Generated through Research Activity

1. Ownership of IP is and shall be vested with the Institute, or with the Creator(s), depending on the type of IP and the circumstances under which the IP was created.
   1. Creator(s) (College Staff, Faculty and Admin) shall own IP that is:
      1. Personnel who anticipate engaging in off-campus research development, or creative activities related to their area of expertise which are independent of their campus activities, the personnel may claim an ownership interest. If they are full time faculty or staff, they must communicate the scope of such off-campus endeavours to their Department Head and Dean or analogous supervisors and obtain written approval prior to commencing the endeavours.
      2. IP that the Institute has specifically agreed to assign to the Creator(s).
   2. College shall own IP that is:
      1. Intellectual property or creative works developed by College personnel within their field of expertise and scope of employment at the College shall be considered the property of the College.
      2. The result of any work specifically commissioned by the Institute of a Lambton College employee, pursuant to a written contract of employment, or when release time from their normal duties has been designated for such work.
      3. The result of sponsored work done under the terms of a contract or other agreement between Lambton College and a sponsor/client. In cases where the contract specifies that a sponsor/client shall have the option or right to own or license the resulting IP, Lambton College will initially hold the IP and then facilitate its transfer.
      4. Projects are carried out by Lambton College grants including Research Innovation Fund (RIF).
      5. The result of work that involves significant use of Institute Funds, facilities or information owned or administered by Lambton College.
   3. External Research Partner shall own IP that is:
      1. In respect to Intellectual Property that is developed during and/or pursuant to the project (the "New IP"), the following shall apply unless otherwise agreed by the Parties in writing: any New IP shall be owned by the partner. Lambton College may not use and/or transfer any New IP without receiving the prior written consent of the partner.
      2. All Intellectual Property owned by the individual external partners prior to this Project shall remain the property of partner.
      3. Any IP rights, including patents, has to be registered by the partner in relation to the New IP and the costs of such registration shall be borne by the partner.
         
         

         When an external partner is involved in the project, a separate Intellectual Property (IP) Agreements will be developed for each individual project and individual partner. There will be no overlap or connection between the IPs. Lambton College's Office of Applied Research and Innovation manages all IP agreements and negotiations. External partner can be Companies, Industries and Not for Profit. The collaborative research projects can be grant based or contract projects. In the case of contract projects, partner covers the cost of the project. In both cases, the following IP ownership rule will be applied:

         Applied Research Projects will ensure the rights of Lambton College students and employees to describe the research projects in their CVs without disclosing any existing or New IP. They may also make presentations about the project and publish aspects of the project after prior approval by the respective industrial partner(s) and such approval shall not be unreasonably withheld.

         It is expected that the general knowledge gained through the applied research projects will be incorporated into teaching materials and will support further research without disclosing any of the industrial partner's IP.

      4. IP in Collaboration with Indigenous Individuals or Communities: Research conduct and ownership of the intellectual property or creative works developed by indigenous individual or communities in collaboration with Lambton College shall be determined based on Lambton College Guiding Principles Document: “Guideline for Research in Collaboration with Indigenous People”.

Disclosure Process

1. IP Generated with no external partner
   1. Intellectual property disclosable hereunder shall be disclosed to the Office of Research & Innovation. IP is disclosed by completing and submitting the Disclosure Form to the Office of Applied Research & Innovation. The form describes of the details of the invention including:
      1. Names of all creators and contributors to the creation; 
      2. A description of the creation and the research done to create it, as well as identifying what the creator thinks makes the creation unique;
      3. A list of all funding sources that were used to complete the research.
   2. The Office of Research & Innovation will meet with the creator to review the disclosure. During this meeting the Office of Applied Research and Innovation will gain an understanding of the invention by asking questions to determine what the creation does, how it works, what it can be used for, what the creator feels is “novel” about the creation, and what future development of the creation the creator plans to pursue.
   3. Following the preliminary evaluation of the potential IP the creation will be assessed to determine if it is ready to commercialize or whether further research is required before the invention can hold any commercial value.
2. IP Generated with external partner
   1. Where the college enters into an agreement with an external partner that may result in the generation of intellectual property, the parties will ensure that a written agreement sets out their respective rights to the intellectual property in the work following section 6.3., and any terms relating to the sharing of risk and revenue from the exploitation of the work.
   2. The College researchers must disclose the developed IP to the external partner as the external partner owns the IP (Section 6.3.). The external partner will be responsible for protection and commercialization of the new IP.

Commercialization

1. For the IP owned by the Creator(s) (formerly 8.1)
   1. College personnel who wish to pursue the commercialization of their “independently” developed and owned intellectual property (Section 6.1.) will be responsible for the commercialization of their IP. The Creator is encouraged to inform the Office of Research & Innovation. The Office of Applied Research & Innovation will assess the commercialization activities, and if appropriate, provide support.
   2. If the Creator is willing to transfer the “independently” developed and owned intellectual property (Section 6.1.) by disclosing the intellectual property to the Office of Applied Research and Innovation, the Office will evaluate the commercial potential of the intellectual property and make a recommendation to the President. Acceptance of such intellectual property by the college will be made at the sole discretion of the College and will require creator(s) to accept all provisions of this policy. 
2. For the IP Owned by the College (formerly 8.2)
   1. Lambton-owned IP may be protected, developed and/or commercialized in the manner that the Institute deems appropriate, and at the Institute’s expense. Where Lambton College decides not to develop and/or commercialize the IP, it may waive its ownership rights in favour of the Creator(s); or, if the IP has been assigned to the Institute by the Creator(s), it will be returned to the Creator(s).
   2. Lambton College will give favourable consideration to Creator(s) who wish to undertake commercialization of Lambton-owned IP themselves, provided the Creator(s) make a convincing case that they have an appropriate business plan and the resources to execute said plan. Requests of this nature will not be unreasonably denied. In cases where the Creator(s) conduct the commercialization themselves the Institute shall be entitled to receive a share in the Income realized by the Creator(s).
3. For the IP Owned by the External Partner (formerly 8.3)
   1. The external partner will be responsible for protection and commercialization of the new IP.
4. Conflict Resolution
   1. The Executive Dean of Applied Research and Innovation is responsible for the administration of this policy. The Office of Research & Innovation will handle questions regarding the application, interpretation or implementation of the policy, or regarding disagreement among creators concerning assignment of rights or sharing of royalties.
5. Disagreement with any determination made by that Office may be directed to the President or his or her designee for a final determination.
6. Waiver or Return of Rights
   1. Since the college aims to encourage creativity, it reserves the right to allow some flexibility in applying this policy on a case-by-case basis. The college may, at its sole discretion, waive, transfer, or license to the creator its rights to any intellectual property when such action does not conflict with obligations to other interested parties. This could occur for instance, if the costs of protecting and developing the intellectual property are not likely to be matched by anticipated income. If at any time the college shall terminate its effort to seek protection of intellectual property, or to discontinue commercial development, the inventor shall, upon filing a request with the college and completing appropriate transfer of rights, be free at his or her expense to seek a patent or copyright, and / or develop, license, and otherwise use the material, subject to the college's rights to reimbursement of incurred costs and sharing of future royalties, in amounts to be negotiated between the college and the creator on a case-by-case basis.

Use of Lambton College Name, Mark, or Insignia

1. Use of the college name, seal or logo on letterhead and business cards is standardized and regulated by the Communications and Marketing Department. Any questions regarding the use of the college name, seal, or logo in circumstances other that the ones listed above should be referred to the Director of Communications.
   
   In particular note that the Lambton College name, seal, and logo may not be used:
   1. in conjunction with any private or commercial enterprise;
   2. in tandem with the advertisement of any product; or
   3. by any individual or group promoting itself.

The Office will:

1. Provide operational support to the Council,
2. Coordinate the activities of the Council,
3. Provide liaison between the Council and departments regarding reviews,
4. Conduct, lead and support program reviews through:
   1. The formation of the review teams,
   2. The organization and support of review meetings,
   3. The identification, modification and implementation of research techniques and tools for program reviews,
   4. The collation, computation and summary of research findings,
   5. The leading and chairing of the program reviews and review meetings,
   6. The writing of program review reports.
5. Prepare program review reports, to the satisfaction of the review team, to be presented to the Council
6. Prepare the annual report, and any other requested reports, for the Council

Definitions

Assignment

A transfer of rights in Intellectual Property.

Commercialization

Necessary activities undertaken in order to exploit IP. Commercialization includes assignment, licensing, manufacturing or production of IP as well as, the protection of IP, including, but not limited to, obtaining patent production and copyright registration, with the goal of financial return.

Copyright

An exclusive right conferred by the government on the creator of a work to exclude others from reproducing it, adapting it, distributing it to the public, performing it in public, or displaying it in public.

Creators

A sole individual, or group of individuals working collaboratively and/or co-operatively, who make, conceive, reduce to practice, author, or otherwise make a substantive intellectual contribution to the creation of Intellectual Property. Creator includes the concept of "inventor" as used in the Canadian Patent Act, or "author" as used in the Canadian Copyright Act.

Direct Expenses

The reasonable costs attributable to commercialization of IP, less any applicable grants or other reimbursements received from other parties. Costs of Commercialization include, but are not limited to, direct salary and benefit costs for personnel engaged in commercialization activities, plue the direct costs of consumable amterials and other reasonable out-of-pocket expenditures associated with evaluating IP, obtaining and maintaining IP protection, preventing unauthorized use or infringement, legal fees, prototype development funds, negotiating and implementing licenses or other agreements with third parties.

Equity

Includes, but is not limited to, non-cash proceeds from the commercialization of IP (e.g. stock, securities, stock options, warrants, buildings, real or personal property.)

Income

Revenue less Direct Expenses.

Institute Funds

Funds awarded to or collected by Lambton College, including but not limited to, operational funds from government, student fees, donations, grants and contracts.

Institute Resources

Include, but are not limited to, Lambton COllege's physical structures, research laboratories, capital equipment, technical facilities, services and personnel. Services include administration of funds received by Lambton College in the form of grants, contracts or other supports provided by the Institute or external sponsors. Personnel includes work done by Lambton College employees and directed work done by Lambton College students.

Intellectual Property or IP

Any form of knowledge or expression created by human intellect that can be owned by a person. It includes, but is not limited to, inventions, discoveries, know-how, show-how, processes, unique materials, copyrightable works, original data and other creative works which have value. It includes that which is protectable by statute or legislation, such as Patents, Copyrights, Trademarks, and Trade Secrets. It also includes the physical embodiments of intellectual effort, for example, models, machines, devices, designs, apparatus, instrumentation, circuits, computer programs and visualizations, biological materials, chemicals, other compositions fo matter, plants, and records of research.

License

Includes a permission to use an intellectual property right within defined time, context, market line or territory.

Patent

A grant by the government to an inventor of the right to exclude others from making, using, or selling his/her invention.

Policy

This Lambton College Intellectual Property policy.

Proceeds

All revenue and/or equity received by the Institute from transfer, commercialization, or other exploitation of Intellectual Property.

Revenue or Gross Revenue

Cash derived from the Commercialization of IP (by the Creator if commercialization by the Creator, or by the Institute if commercialization by Lambton College) including, without limitation, proceeds from royalties, profit-sharing, lump sum payments, and sale of equity shares. Revenue does not include funding for sponsored research projects

Trademark

Word, slogan, design, picture, or other symbol used to identify and distinguish goods and any identifying symbol, including a word, design, or shape of a product or container, that qualifies for legal status as a trademark, service mark, collective mark, certification mark, trade name, or trade dress.

Trade Secret

Information that is confidential and the subject of reasonable efforts to preserve confidentiality and has value because it is not generally known in the trade. Such confidential information is protecte against those who gain access to it through improper methods or by a breach of confidence.