Intellectual Property

Principle:

Members of Memorial University produce significant intellectual property that stands to benefit the University, the individual and, both in Newfoundland and Labrador and more widely, society at large.

The University has an obligation to facilitate the use of intellectual property in which it has invested and to share in the benefits realized.

Purpose:

To clarify the ownership of intellectual property created or developed by members of Memorial University

Scope:

All members of Memorial University and all forms of intellectual property. It does not replace clauses in collective agreements, but may provide guidance for such clauses where they do not exist.

This policy should be read in conjunction with the Intellectual Property Policy of the School of Graduate Studies which provides guidance on a number of related issues.

Legislative Basis:
The Patent Act provides protection for creators of inventions.
The Copyright Act gives the owner of original literary, artistic, dramatic and musical works, including computer programs, the sole right to produce or reproduce a work.

The Trade-marks Act protects a word, symbol, design, or combination of these, used to distinguish the wares or services of a person or organization.

The Industrial Design Act protects the shape, pattern or ornamentation applied to a useful article that is mass-produced.
The Integrated Circuit Topography Act protects the three-dimensional configurations of the materials that form integrated circuits.

The Plant Breeder's Rights Act deals with new plant varieties. There is also an industry-based registration system for ornamental plants.

In addition to the Federal laws and regulations, the common law, which is based on judicial precedent, protects the owner of other types of intellectual property. A Trade Secret is a formula, process, method, device or other business information, that is not readily known and which may represent economic value. Unlike the federally regulated forms of intellectual property listed above, Trade Secrets may not be registered in any public office to provide protection. Common law will however protect the owner of trade secrets as a recognized form of intellectual property.

Definitions:

Intellectual Property includes the rights relating to

literary, artistic and scientific works, including computer software,
performances of performing artists, phonograms, and broadcasts,
inventions in all fields of human endeavor,
scientific discoveries,
industrial designs,
trademarks, service marks, and commercial names and designations,
protection against unfair competition,
and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

Members of Memorial University (members) includes current employees, registered students, and post-doctoral fellows of Memorial University.

Researchers includes those individuals involved in research under the auspices of Memorial University in accordance with points 1B) and 3) below and individuals covered by Article 27 of the collective agreement between Memorial and MUNFA.

Policy:

1. Intellectual property developed by employees in the course of their assigned duties and responsibilities is the property of the University¹, with the following exceptions:

A) The interest of the members of MUNFA is set out in the collective agreement between the union and the University. For purposes of this policy, clinical professors in the Faculty of Medicine are deemed to be covered by the regime described in Article 27 of the collective agreement.

B) Employees who are not members of MUNFA but who participate in research projects under the auspices of Memorial shall share that intellectual property with the University in accordance with Appendix A.

This exception does not apply to employees at the Marine Institute who are engaged in contract research in which the University commits to undertake research for other agencies of firms. Intellectual property arising in that context is subject to the terms of the contract under which the research is performed.

C) Employees who are excluded from MUNFA because of their administrative appointments retain the rights and responsibilities described in Article 27 of the collective agreement with MUNFA with the exception that intellectual property created pursuant to their administrative responsibilities is the property of the University as is the intellectual property of MUNFA Members created pursuant to the delegation of administrative responsibilities under Article 28. See the University's Records Management policy.

2. Intellectual property developed by students in the course of their academic program, including teaching assistantships, at Memorial remains the property of the students, with the following exceptions:

A) Students who participate in research projects under the auspices of Memorial and who, in the course of those projects, conceive or develop potentially patentable inventions, discoveries or creations shall share that intellectual property with the University in accordance with Appendix A.

B) Intellectual property developed in the course of employment while a student is employed on a work term is subject to the terms of contract with the employer.

3. No member of the University may enter into a contract or other type of agreement with a third party that affects the intellectual property of the University or of other members, including intellectual property in which the University and the member have a joint interest and ownership, without the approval of the Vice President (Research) and the agreement of such other members.

Requests for deviations from this policy in the context of individual research contracts shall be submitted to the Vice President (Research) for approval.

4. The researcher shall notify his or her Administrative Head in writing of the development or creation of any intellectual property that has potential for commercial exploitation. Within thirty (30) days of the date that the Administrative Head was so notified, the University shall determine whether it will participate in the commercial exploitation and shall notify the researcher in writing of its determination. If no determination is made within that period, the researcher is free to pursue commercialization without the University's participation.

Institutional Support:
Memorial will provide Members a service through which intellectual property potentials may be assessed, royalties negotiated and benefits realized. This service will be available for all forms of Intellectual Property. Members making use of this service with regard to intellectual property not otherwise shared with Memorial may be required to enter into contractual relations with Memorial or one of its entities².

Separately Incorporated Enterprises (SIEs):
Each SIE shall have a policy on intellectual property which shall deal with the issues of registration, maintenance and use of trademarks as well as specific forms of intellectual property appropriate to the enterprise.

Appendix A

Appendix A is intended to be compliant with the provisions of Article 27 of the collective agreement with MUNFA. In the case of those individuals covered by that article, the collective agreement takes precedence in the case of a discrepancy.

A1. The primary responsibility of the University is to promote teaching, research and the creation of knowledge. The University recognizes that the community at large should also benefit from inventive and creative advancements in artistic, creative, technical, and scientific knowledge.

A2. It is understood that the University and its researchers have a joint interest and ownership in all inventions, discoveries or creations conceived or developed during the course of research at the University, as set out in the intellectual property policy

PATENTS
A3. Where a researcher is party to a research or development contract which has explicit provisions for patents and revenue sharing from such patents and an invention is made in the course of research or development supported by that contract, the provisions of that contract shall take precedence over this policy if it has been approved by the Vice President (Research) in advance of the signing of the contract.

A4. The researcher shall notify his or her Administrative Head in writing of all potentially patentable inventions, discoveries or creations made by him or her. Within thirty (30) days of the date that the Administrative Head was so notified, the University shall determine whether the invention, discovery or creation arose from activities involving the utilization of University facilities or through the use of grants or contracts managed by the University, and shall notify the researcher in writing of its determination.

If the University determines within this thirty (30) day period that the invention, discovery or creation arose from activities involving the utilization of University facilities or through the use of grants or contracts managed by the University, the researcher shall assign to the University all proprietary rights for patents based on what he or she conceived, developed or embodied.
If the University determines that the invention, discovery or creation did not arise from activities involving the utilization of University facilities or through the use of grants or contracts managed by the University, or if the University makes no determination within thirty (30) days of the date the Administrative Head was notified, the researcher may deal with the patent as he or she deems appropriate. The University shall relinquish all claims to the invention, discovery or creation at any time in the future. This latter situation shall not preclude a jointly negotiated development agreement between the researcher and the University.

A5. When a potentially patentable invention, discovery or creation is determined to be the result of University-related activities, in accordance with section four above, the researcher shall provide total disclosure in writing to the Director of the Genesis Group, Inc. (copied to the Vice-President (Research)) sufficient to allow the preparation of a patent application. The University shall decide whether it intends to pursue a patent application and shall notify the researcher of its decision within one hundred twenty (120) days from the date that the researcher completes disclosure. This patent protection shall be applied for within the above one hundred twenty (120) days unless it is agreed by the University and the researcher that this period is to be extended. This patent protection shall be pursued in the name of the researcher who is the inventor, discoverer, or creator. The cost involved in this process shall be paid by the University. The researcher shall provide full co-operation and assistance in the preparation of the patent application, including disclosure of information regarding any relevant potentially patentable discoveries which have not yet been protected. Such disclosure shall be confidential until a patent application is filed by the University or the researcher or a decision not to file is made by the University and the researcher.

A6. If the University does not notify the researcher in writing that it intends to pursue a patent application within one hundred twenty (120) days from the date that the researcher completes disclosure or notifies the researcher in writing that it does not intend to pursue a patent application, then the University is deemed to have relinquished all claims to pursue patent protection for this particular invention, discovery or creation at any time in the future, all proprietary rights in the invention shall revert to the researcher, and the researcher may pursue patent protection at his or her own expense. In such a case, the University's equity shall be reduced to that stated in section 11 below.

A7. As soon as the patent protection has been applied for or the decision has been taken not to apply, the researcher shall have the right to publish the results of his or her research which pertain to the invention, discovery or creation.

A8. If, within one (1) year of obtaining patent protection, the University has not proceeded with the development of the invention, discovery or creation, the researcher may request in writing that the University reassign patent rights to him or her. Within thirty (30) days of receipt of this request, the University shall:

comply with this request; or
proceed with development in accordance with a mutually agreed development plan.

If such an agreement on a development plan has not been reached, the patent rights shall be reassigned to the researcher, and the University's equity shall be reduced to that stated in section 11 below.

A9. The researcher shall share in any royalties derived from the commercialization of patents which he or she has assigned to the University.

A10. If the University pursues patent protection, the sharing of royalties shall be as follows:

The royalties to be shared shall be those remaining after the University and the researcher recover their direct costs incurred in the development of the invention, discovery or creation, and patenting process. These direct costs shall not include overheads. The Genesis Group, Inc. may charge overheads not to exceed thirty-five (35) percent of salaries incurred in the processing of this project except by agreement with the researcher.
The share of royalties accruing to the researcher shall be:

- fifty (50) percent of the first $200,000;
- forty (40) percent of the next $200,000;
- twenty-five (25) percent of the remainder.

A11. If, pursuant to section six above, the researcher decides to pursue patent protection without the University's aid, the sharing of royalties shall be as follows:

The royalties to be shared shall be those remaining after the researcher and the University recover their direct costs incurred in the development of the invention, discovery or creation, and the patenting process. These direct costs shall not include overheads. Genesis Group, Inc. or other University agencies may charge overheads not to exceed thirty-five (35) percent of salaries incurred in the processing of this project except by agreement with the researcher.
The share of the royalties accruing to the University shall be:

- fifty (50) percent of the first $200,000;
- forty (40) percent of the next $200,000;
- twenty-five (25) percent of the remainder.

A12. The University's share of royalties shall be used to support research and scholarly activity.

A13. Neither the University nor the researcher shall enter into any agreement with a third party which alters the patent rights of either party as stated in this appendix without the written consent of the other party.

COPYRIGHTS

A14. The copyright on all literary works, dramatic works, musical works, artistic works, computer programmes, or other forms of intellectual property produced or created by a researcher and arising from the research is vested in the researcher who created the works. The benefits that may accrue to the researcher may be limited by the terms of external contracts and licensing agreements.

Endnotes:

1. Regardless of the ownership of the economic rights under the Copyright Act, the University recognizes the moral rights conferred on authors under that Act.

2. The service referred to is offered by the Genesis Group, formerly Seabright Corporation