Learn how the process works, from disclosure to product!
What is intellectual property?
Intellectual property is any form of knowledge or expression created with one’s intellect. This can include inventions, plant varieties, software, trademarks, literary, artistic, musical or visual works or know-how. Inventions can be protected by patents, while software, literary, musical and artistic work can be protected by copyright.
Most IP created at universities is based on research primarily sponsored by some form of government funding. There is, therefore, some onus on those who own the IP to make efforts to ensure that it is used for the benefit of the public at large. In many cases, achieving that benefit requires protection and commercialization. Offices like the University of Guelph’s Catalyst Centre have been established at most research-intensive universities to provide advice and services to the university community to facilitate the protection and commercialization of IP.
What is an Invention Disclosure?
An Invention Disclosure is a detailed description of your invention or other IP that is provided to the Catalyst Centre. In addition to invention details, the disclosure includes information on the sponsors of the research and other information necessary to begin evaluating and protecting the new IP. The document will be treated as confidential.
Why should I disclose?
The Invention Disclosure is the first formal step that could lead to the commercialization of your IP. By pursuing commercialization, you increase the ways by which research can have a positive influence on society as well as possibly earning extra revenue for the inventors and/or the University. Also, depending on the source of research funds, you may have an obligation to disclose new IP.
How do I know when to disclose?
You are encouraged to submit an Invention Disclosure for all developments that you feel might solve a significant problem and/or have significant value. This should be completed well before presenting through publications, posters, conferences or other means of communication. Premature public disclosure may limit the potential for patent protection. If you are in doubt, you can contact the Catalyst Centre to discuss the possible invention.
What if I have already published or presented my invention?
While a publication of an invention will limit the ability to get a patent in most countries (it is no longer considered 'novel'), there is a grace period of one year in some countries, including Canada, the United States, Mexico and Australia. Hence, even though some rights will have been lost, disclosing an invention is still encouraged if it is within the first year after a public disclosure.
What if I need to discuss my work with a company or other third party?
It is understood that research is a collaborative process, and that it will often need to be discussed with others before it is ready for protection. Depending on the situation, it may be advisable to obtain a confidentiality agreement to protect both parties.
Grant applications, at least in Canada, are considered confidential. However, the abstract is often published, so it is advisable to keep confidential information confined to the main part of the application. If possible, it may also be advisable to keep key details out, to avoid some reviewers from taking advantage of it.
Conversations with colleagues are considered confidential, as long as there is an understanding that the information being discussed is of a confidential nature.
Conversations with sponsors or companies may be confidential, but it is strongly advised to have a confidentiality agreement in place to protect both parties’ interests in the information being discussed. More information on confidentiality agreements can be found on our forms and templates page
Do I have to disclose my invention to the Catalyst Centre even if I wish to commercialize on my own?
Yes, an invention disclosure is required even if you commercialize independent of the Catalyst Centre. This enables the University to confirm that there were no conditions on the research funding, as well to establish the right to use the invention for teaching and research purposes. The University is also required to report new inventions to the government.
How do I submit a new Invention Disclosure?
The Invention Disclosure Form can be found at this link.
Who owns the intellectual property that I create while at the University of Guelph?
At the University of Guelph, ownership of new IP resides with the inventor/creator. However, there are exceptions to the policy based primarily on conditions attached to funding. For example, as a condition of funding from OMAFRA, the University owns new IP, and many research contracts with companies require that the company be offered a licence to new IP from the University. Inventors without these restrictions may also choose to assign ownership to the University and use the services of the Catalyst Centre.
What are the benefits of assigning ownership to the University?
When ownership is assigned to the University, the Catalyst Centre will take a lead role in conducting an analysis of the technology and creating a strategy for protection and marketing. The Catalyst Centre will also manage the protection of the technology by patent or otherwise, market the technology, seek out partners and negotiate agreements. Risk associated with patent and/or marketing costs will be borne by the University. All net revenues from a technology are shared 50:50 between the University and the inventors.
How does it work if I elect not to assign ownership to the University?
If there are no conditions tied to the research that led to the invention, then inventors may choose to manage new IP on their own. In this case, the University asks the inventors to sign an agreement that affirms the University’s right to use the technology for teaching and research purposes, and also asks the inventors to provide a periodic progress update so that the University can report on new jobs or products that have been created from University research. Inventors who commercialize independently are not expected to share revenues with the University.
How does the Catalyst Centre assess new invention disclosures?
Once IP ownership is assigned to the University, Technology Transfer Managers, often with the help of inventors, examine the merits of an invention based on two criteria: Can the invention be protected? And, what is the market potential? Whether a technology can be protected most often hinges on whether it is novel compared to existing literature and patents. Market potential depends on competing technologies, the size and growth potential of the relevant market, the time and money required to develop it into a product and whether the invention solves a specific problem.
What if the results of the assessment are negative?
If the Catalyst Centre decides not to pursue patent protection and/or chooses not to market the invention, the University may offer back to the inventor the right to commercialize on his or her own. This may sometimes require the approval of a third party that funded the research. If the Catalyst Centre and the inventor agree with an assessment not to pursue, then the technology file will be closed.
What is a patent?
A patent is a right, provided by a government, to exclude others from using, making, selling or importing a patented invention. This right is granted in exchange for providing a complete disclosure of the invention, and lasts for 20 years from the date of application. A patent does not grant the holder the right to practice their invention - there might be other patents that it falls under, or there might be certain regulatory restrictions depending on the industry. Inventions that are patentable include processes, machines, compositions of matter (substances) and methods.
What is ‘patentable’?
In order to be patentable, an invention must be novel, it must not be obvious to a person skilled in the field of the invention, and it must be useful. Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these (such as new uses of known compounds), are patentable subject matter.
Can someone patent a naturally occurring substance?
Not in its natural state. A natural substance that has never been isolated or known might be patentable, but only in its isolated form. A variation on a natural substance could be patentable if the inventor is able to demonstrate a non-obvious modification that offers significant advantages over the natural substance itself.
What is the definition of ‘inventor’ on a patent?
Under patent law, an inventor is a person who takes part in the conception of the ideas in the claims of a patent application. Thus, inventors might change as the claims change during patent prosecution. An employer or person who provides money to build or practice an invention is not an inventor. The physical act of performing experiments to prove an invention does not necessarily make one an inventor. Again, the conception of the invention is the key part.
How do I determine if something is already patented?
There are a number of useful databases for searching through existing patents and patent applications. Links to these databases can be found here.
Who is responsible for patenting?
The Catalyst Centre hires outside patent counsel for patent protection, thereby gaining access to patent specialists in diverse fields. Inventors work with counsel to draft the applications and to file responses to patent offices during prosecution.
What is the patenting process?
Typically, the patent is drafted by a patent agent, with input from the inventor and the Catalyst Centre. The patent application would usually be filed as a provisional application in the U.S. The provisional application is an informal application that sets a date of invention, and allows for a period of time up to one year to add data and defer some costs. It is important to note that the applicant only receives the benefit of the filing date for material that is adequately described in the provisional application.
No later than one year after filing the provisional application, the application must be converted into a regular application. Typically, the Catalyst Centre would file a Patent Cooperation Treaty (PCT) application, which preserves the opportunity to file patent applications in many countries around the world. An advantage of the PCT is that filing in individual countries can be delayed until 30 months from the original filing, which provides more time to develop and market the technology before incurring major costs. In addition, a preliminary report will be issued by a patent office regarding the patentability of the invention, which can be used to prepare for prosecution in individual countries.
When the PCT expires, regular applications must be filed in every country in which protection is desired. Prosecution of the application happens in each country. During prosecution, the applicant will receive a notice from the patent office on whether the patent is accepted. Usually, the patent is rejected at first because it is deemed unpatentable over existing literature and patents. These letters are called Office Actions. If the patent is rejected, the patent agent must file a written response to modify the claims or to point out where the patent office is incorrect. It will often take two or more Office Actions and responses from the patent agent for the patent to issue.
What does this all cost?
Typically, the first step (filing a provisional application), will cost approximately $5,000. Filing the PCT application will often cost an additional $10,000. National phase applications typically cost $5,000 to $10,000 per country, depending on translations that may be required. Prosecution in each country will vary depending on how many Office Actions there are, but typically would be $15,000 to $30,000 per country to have an issued patent.
How long will the Catalyst Centre carry costs?
The BDO often assumes the risk of filing patent applications before a licensee is found. Once a licensee is found, the licensee typically takes over the patenting costs. If no licensee can be found by the time national-phase applications are due (30 months from initial filing), the Catalyst Centre will most often decline to continue to pay the costs.
The Catalyst Centre has an extensive section directed to all aspects of copyright, including considerations for teaching and classroom use. This can be found at the following link: Copyright FAQs
What is a startup and why choose to create one?
A startup is a new business formed to commercialize one or more pieces of related intellectual property. A startup is an alternative to licensing a technology to an established company. Factors in deciding whether to start a company include:
- Development risks (large companies are often unwilling to take risk for unproven technology)
- Costs versus return (Can startup investors achieve a high rate of return?)
- Potential for multiple products or services (not many companies survive on a single product)
- Large competitive advantage and market
- Potential revenues sufficient to sustain and grow a company
How can the Catalyst Centre help?
If a technology is owned by the University and there is interest in a startup, the Catalyst Centre can assist you and other founders by introducing you to investors and consultants to bring possible resources to the company. The Catalyst Centre can also help in gaining resources such as proof-of-principle grants to help push the technology along. The Catalyst Centre will also work with a representative of the company (who should not be a University of Guelph employee to avoid conflict of interest) to grant a license to the new company.
How will my invention be marketed?
There are many strategies that can be used to find possible licensees for inventions. Sometimes pre-existing relationships or contacts of the inventors or the Catalyst Centre are useful in marketing an invention. Studies show that as many as 70% of licensees were previously known to inventors, and so existing research or consulting relationships are important sources. Market research is also conducted to locate appropriate partners, as well as passive marketing through posting opportunities on websites. Attendance at industry events also provides opportunities to meet possible partners.
How long does it take?
It can often take months or even years to locate a licensee, depending on the attractiveness of the invention and its stage of development. Many university inventions are at an early stage of development, requiring substantial additional investment, and so finding a licensee can be difficult.
How can I help to speed the process?
Active involvement from inventors can dramatically improve the chances of finding a licensee. Existing relationships can help to locate a prospective partner. Further, once interested companies are identified, the inventor is often the best person to describe the details of the invention. The most successful licensing processes usually result from the Catalyst Centre and the inventor working together.
Can there be more than one licensee?
Yes, some inventions can be licensed non-exclusively to multiple companies, and some can be licensed exclusively to several companies for different applications or for different geographical areas.
What is a licence agreement?
A licence is permission granted to certain rights in an invention. The agreement outlines the rights and responsibilities of each party related to the use and commercialization of the IP. Licence agreements typically stipulate that the licensee must work diligently to bring a product to market, as well as provide a fair financial return to the University.
What can I expect to gain if my invention is licensed?
A share of revenues received by the University will be distributed to the inventor. This will most typically be 50% of net revenues. In addition, inventors can enjoy the knowledge that their inventions are being used for the benefit of the public and the economy. Further, new relationships with businesses are another benefit that can help one’s teaching, research and consulting endeavours.
What other agreements are typical at the Catalyst Centre?
- Confidentiality Agreements or Non-Disclosure Agreements (CAs or NDAs) are used to protect the confidentiality of information during evaluation by potential licensees. These agreements are also often used to protect companies and researchers when discussing new collaboration or sponsored research opportunities.
- Material Transfer Agreements (MTAs) are used for incoming and outgoing research materials. They describe the terms by which materials are shared (usually for research). IP rights can sometimes be endangered without a proper MTA.
- Inter-institutional Agreements are used when there is an invention disclosure that has inventors from two or more institutions. These agreements typically describe who will take the lead in licensing IP, and how expenses and revenues will be shared.
- Option Agreements provide a company with an exclusive ability to evaluate a technology before committing to a licence. Usually, companies are provided with an option to license for IP arising from a sponsored research contract.