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.
To clarify the ownership of intellectual property created or developed by members of Memorial University
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.
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 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.
Intellectual Property includes the rights relating to
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.
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:
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:
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.
Separately Incorporated Enterprises (SIEs):
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
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.
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:
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:
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:
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.
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.
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