Frequently Asked Questions
On this page, you will find more about intellectual property (IP) at Memorial University. If you continue to have questions please contact RIO.
Intellectual Property (IP) means products of the intellect and includes things such as data, documents, reports, analyses, tests, specifications, charts, plans, drawings, ideas, inventions, discoveries, creations, schemes, correspondence, communications, lists, manuals, technology, techniques, methods, processes, services, routines, systems, procedures, practices, operations, modes of operations, know-how, trade or other secrets, contracts, financial information, engineering reports, environmental reports, field notes, sketches, photographs, computer programs, records or software, specifications, models, database rights, service marks, scientific or technical advancements, improvements, devices, products, concepts, designs, prototypes, samples, technical information, materials, works of authorship, patterns or other information. Please also refer to the Intellectual Property definition on Memorial’s IP Policy.
2. What are Intellectual Property Rights?
IP Rights are legal rights that relate to intellectual property and include rights granted under federal legislation such as the Copyright Act, Patent Act, Trademarks Act and Industrial Design Act. The rights that apply to particular IP usually depend on the nature of that IP. For example, copyright exists in books, movies, computer programs and other forms of expression. Among other things, the holder of the copyright has the exclusive right to prevent others from copying or publishing the IP that is the subject of the copyright. Patent rights exist in certain inventions and give the holder of the patent the exclusive right to make that invention. Trademark rights protect the use of particular brands in association with particular goods and services. Please also refer to the Intellectual Property Rights definition on Memorial’s IP Policy.
3. What is Memorial’s IP Policy?
Memorial’s new IP Policy was approved by the Board of Regents on May 9, 2019. The IP Policy is largely a "creator-owned" policy in that it is based on the notion that ownership of IP should reside with the creators of that IP, subject to certain encumbrances.
IP is said to be “encumbered” if its ownership is subject to rights or interests that have been granted to people or organizations other than the creator(s).
There are many ways in which IP can become encumbered, including:
- the participation of its creator(s) in research or other project that is subject to a contract between Memorial and a third party;
- the execution by its creator(s) of a Research Participation Agreement (RPA), in which case certain rights or interests in that IP will be granted to Memorial and third parties;
- the creation of IP in the course of a work-term or other employment with Memorial (except in the case of ASMs); or
- the creation of IP under a contract with Memorial.
A Research Participation Agreement is an agreement between a researcher and Memorial. It is signed when Memorial itself is a party to a contract with a third party (such as an industry partner) with respect to a particular research project. In order for Memorial to ensure that researchers engaged in that project agree to abide by the terms and conditions applicable to that project, Memorial asks such researchers to sign an RPA.
Sponsorships and partnerships occasionally involve a departure from normal university policy and can affect intellectual property ownership, access, licensing, publication rights, confidentiality, and liability concerns related to the outcomes of research projects. By completing an RPA you have a chance to understand your obligations to your sponsor or partner. It is mandatory for faculty, students and staff to sign an RPA when participating in projects that are subject to terms and conditions that affect ownership of IP and impose obligations of confidentiality.
Unless the IP is encumbered, faculty and students own the IP they create. Where there are two or more co-creators, they shall co-own such unencumbered IP. If an RPA has been completed the IP is encumbered and ownership of IP does not follow Memorial’s IP Policy.
IP created by University staff hired to provide administrative, scientific or technical support is owned by the University, excluding Marine Institute research scientists. If staff are being paid under a project with terms and conditions that affect IP, the terms and conditions of the project apply.
If staff create unencumbered IP during the course of research and they intend to commercialize it, the staff must file an invention disclosure and submit a written request for that IP to the Research Innovation Office (RIO).
If you have created or improved a process, material, or product, the next step is to submit an invention disclosure to RIO. The invention disclosure is used to clarify the ownership of your research results, determine obligations to any sponsors or partners you may be working with, and help identify opportunities outside of the university to advance your work even further.
You can find the Invention Disclosure Form on the RIO webpage. If you intend to commercialize the IP on your own, you only need to complete Part 1 of the invention disclosure form. If you wish to avail of support from Memorial’s RIO (e.g. initial assessment of commercial potential, market analysis, patenting support, business planning, assistance with licensing, etc.) you must complete Parts 1 and 2 of the Invention Disclosure Form. Once completed, the form needs to be submitted to your respective Administrative Head. The Administrative Head will sign the Form, indicating that they have reviewed the information and it is correct to the best of their knowledge, and then promptly forward the form to RIO.
Faculty, students or staff who created an invention should submit an invention disclosure to RIO if they intend to pursue transfer of IP. Even if you intend to commercialize the IP on your own, the invention disclosure is used to clarify the ownership of your research results, determine obligations to any sponsors or partners you may be working with, and if applicable, identify opportunities outside of the university to further advance your work.
10. If I request the University’s assistance is the University obliged to patent and commercialize my invention?
No. RIO will determine if the University will pursue IP protection and/or commercialization of the IP upon reviewing Parts 1 and 2 of the invention disclosure.
If the creator(s) desire University’s assistance through RIO to commercialize the IP, the IP will need to be assigned to the University. The University will receive all revenues generated from the licensing or sales and will ensure the following distribution:
i. Revenues will be first used to reimburse the University for the out-of-pocket expenses incurred in evaluating, obtaining and maintaining IP protection;
ii. Thereafter, revenues will be distributed by the University to the creator(s) based on an agreement between the creator(s) and the University.
12. How do I know if the University is entitled to a repayment of Significant Documented Contribution made towards my research project?
A Significant Documented Contribution is a financial or in-kind contribution of funding by the University toward the conduct of Research (please refer to the full definition on Memorial’s IP Policy). Significant Documented Contribution needs to be documented prior to the start of a research project. The University is only entitled to a repayment of its Significant Documented Contribution if the account opening memo in ROMEO indicates that the University has made a Significant Documented Contribution towards that project.
If a team member would like to pursue commercialization of IP created at the University, it is important to complete and file an invention disclosure with RIO. RIO will help clarify the ownership of the IP and determine obligations to any sponsors or partners of the project.
Contact RIO at email@example.com.
An invention disclosure needs to be submitted to RIO to clarify the ownership of the invention and determine obligations to any sponsors or partners. If the invention is deemed unencumbered, the creator(s) can pursue commercialization on their own or request assistance from the University. Staff that develop unencumbered IP and want to pursue commercialization on their own, need to request in writing the assignment of that IP with RIO.
If an IP creator intends to pursue IP protection on their own, they can do so at their own expense and without any resources from the University (including any funding sources that are under contract with the University). If the IP creator(s) request(s) assistance from the University, RIO will evaluate the IP for patentability and commercialization potential. If the University wants to pursue commercialization of the IP, the IP will be assigned to the University and the University will support the costs of evaluating, obtaining and maintaining IP protection, subject to an agreement reached between the University and the creator(s).
17. I want to commercialize my inventions on my own. Should I still file an invention disclosure form?
Yes. An invention disclosure should be submitted to RIO to clarify the ownership of the invention and determine obligations to any sponsors or partners. Any creator of IP that commercializes that IP on their own without first seeking a review by RIO runs the risk of taking on unnecessary legal risk, as that IP may already be encumbered. A proper review of the IP by RIO will assist in minimizing any such risk.
18. What do I do if I want to commercialize an invention that other researchers, students and staff were involved in?
The first step is to submit a completed invention disclosure to RIO. Even if you intend to commercialize the IP on your own, the invention disclosure is used to clarify the ownership of your research results and determine obligations to any sponsors or partners you may be working with.
A patent can only be issued in respect of an invention that meets certain legal requirements, whereas authorship of an academic paper is often determined based on academic custom. Like joint-authorship, it is possible to be a joint-inventor. However, because authorship is more expansive than inventorship, it is probable that the list of co-inventors does not include all of the co-authors. A rule of thumb is that an inventor is often someone who contributes to the conception and reduction to practice of one or more of the claims in a patent application or patent. RIO should be contacted for more specific assistance in determining whether a creator is an inventor for purposes of patent law.
The inappropriate naming of an inventor on a patent may be grounds for the court to invalidate the patent. An inventor’s contribution must relate to at least one claim in the patent document. A rule of thumb is that an inventor is someone who contributes to the conception and reduction to practice of one or more of the claims.