Our Usask Innovator's Guide has been developed to be a helpful resource for everyone on campus to understand more about topics such as Intellectual Property.
The subject matters to which intellectual property rights can be attached are defined by acts of government (primarily) and the common law. Intellectual property can be acquired in relation to:
- “inventions” by the operation of the Patent Act;
- artistic, dramatic, musical or literary “works” by the operation of the Copyright Act;
- plant varieties, by operation of the Plant Breeders Rights Act;
- protection for aesthetic (non-useful) features of shape, configuration, pattern or ornament applied to useful articles is the subject of the Industrial Design Act;
- the design of the interconnections and/or elements of layered integrated circuit products are protected under the Integrated Circuits Topography Act; and
- marks and devices used to distinguish the wares or services of a person or business from those of others in the marketplace are protected under the Trade-marks Act.
Like other property rights, intellectual property rights can be enforced against anyone who does that which only the intellectual property holder is permitted to do, as provided by the pertinent statute.
It is important to recognize that intellectual property can be acquired only in relation to “expressed” or “manifest” products of the mind. Of surprise to some, there is simply no intellectual property available in relation to: ideas, mere information, data, knowledge, facts or know-how. Nevertheless, such assets can be valuable and there are legal means for protecting such subject matters, but not through a property regime. Protection of these subject matters can be acquired pursuant to laws that govern relations between persons. For example, to protect research results or other information or data, a person might disclose it to another in accordance with the terms of a contract that requires the recipient to not further disclose the information to another person. Such a contract is commonly called a confidential disclosure agreement, confidentiality agreement or non-disclosure agreement.
Canadian law operates only in Canada, but other countries of the world have legislation that creates rights similar (but not identical) to those available in Canada. It is important to recognize this, because a person may want to acquire intellectual property rights in more than one country.
Intellectual property may be held by an individual, solely or jointly with one or more others, or by other “legal persons” such as corporations.
Like other property, intellectual property can be bought or sold, leased, and/or licensed. A license is just a form of permission; the intellectual property holder allows a licensee to do one or more of the things that, under the relevant intellectual property law, only the intellectual property holder may do. In commercial relations, there will usually be a payment(s) given for the receipt of a license. Such payments, depending upon how they are arranged, may be called royalties. However, often money is not exchanged if the purpose of the license is to enable a non-commercial entity, such as another university researcher, perhaps a collaborator. Another way to enable another to do those things that only the intellectual property holder may do is to assign the rights. An assignment is different from a license. Assignment of intellectual property rights involves giving them to another person; it is a transfer of ownership.
Some of the types of intellectual property that are frequently created or exploited at the University of Saskatchewan are described in further detail below, as are the pertinent policies and principles that the University recognizes as being critical to their formulation.
University of Saskatchewan Principles and Policies Regarding Intellectual Property and Commercialization
The intellectual property policies of the University of Saskatchewan reflect a number of basic principles that are consistent with its core functions and mandates. Four of these basic principles are as follows:
1. Enhance the University’s ability to achieve its teaching, research and community-engagement goals. (i.e., to support the University’s mandate).
- The University seeks to assist members of the University community to access third-party IP that is necessary to enable their teaching, research or community development activities (e.g., administrative and legal assistance and advice, acquisition of necessary clearances or licenses).
- The University is committed to the enablement and support of building and maintaining relationships between researchers and a range of stakeholders including funders, governments and their agencies, and private-sector enterprises.
2. Support the timely transfer of knowledge created at the University for public use and benefit (i.e., knowledge transfer).
- The University enables and supports the translation of research, scholarly and artistic works, and related IP for public use and benefit (through publication and/or protection and commercialization, or otherwise).
- The University seeks to realize revenues from commercialization of IP rights in research, scholarly and artistic works for the benefit of the University and the IP creator(s).
- The University seeks to assist in the development of IP-related opportunities for the benefit of the University, its graduates and the local, provincial, and Canadian economies.
- The University undertakes to balance its risks with the opportunities created by transferring the new knowledge.
3. Ensure that all members of the University community and its external stakeholders are treated fairly (e.g., respecting credit, participation in financial benefits, and control of uses) given their creative and other contributions, their institutional roles and responsibilities, and the University’s interests (i.e., represent and express fairness).
- The University recognizes that each member of the University community has interests in IP created by him or her in the course of work or study at the University or through the use of University resources.
- The University also recognizes that the nature of that interest is not equal among all individuals or in all circumstances, but rather depends on the nature and extent of the University’s contribution, the individual’s roles and responsibilities and applicable law.
- The University distributes revenues from commercial exploitation of rights in research, scholarly and artistic works, and related IP among the University and IP creators in accordance with the foregoing.
- The University acknowledges and honours each individual’s right to be recognized for and attributed with his or her respective creative contributions.
- Through policies respecting dealings with external stakeholders, the University seeks to encourage development of mutually beneficial relationships.
4. Respect the academic, research and scholarly environment of the University (e.g., represent and express the University’s environment of free inquiry).
- The University will promote and disseminate IP policies and procedures.
- The University acknowledges and honours the freedoms afforded members of the University’s research, scholarly and artistic community, to freely engage in research, scholarly and artistic activities and to disseminate those to the public.
- Through its intellectual property policies, the University seeks to acknowledge and honour principles and policies related to academic and scholarly integrity adopted by the University.
1. Inventions Policies - Definitions
For the purposes of the University of Saskatchewan’s Inventions policies the definitions following pertain.
- “Commercialization” means, realizing and attempting to realize monetary and/or other commercial value from Inventions and activities related thereto including, without limiting the generality of the foregoing, marketing, protecting rights, interests and entitlements by preparing, filing and prosecuting applications for statutory protection, issuing, causing to be issued and maintaining grants and registrations of intellectual property, funding reduction-to-practice and development of prototypes, Technology Transfer, creating companies and providing management services and advice to such companies, advising interested parties, and otherwise protecting and/or exploiting interests in Inventions.
- “Create” means conceive, discover, invent, find, design, or otherwise create.
- “Disbursements” means money actually expended by the University to assist Commercialization but does not include any amounts which would be incurred whether or not a specific Commercialization activity commences or occurs including, but not limited to, overhead charges, pre-existing salaries and wages, rent (except where incurred for the sole purpose of a specific Commercialization activity), utilities or any other indirect costs.
- “Invention” means an invention within the meaning of article 27 of the collective bargaining agreement between the University and the University of Saskatchewan Faculty Association and every right, title, and interest of the faculty or staff member or graduate student in and to any such invention Created in whole or in part by the said individual during his or her employment by or studies with the University, that is related, directly or indirectly, to investigation, research, scholarly activity, or other work or studies of the said individual at the University or that arises there from, or from use of University Resources.
- “Invention Disclosed” means an Invention described in a Report of Invention delivered to USask Research Excellence and Innovation, and any portion thereof.
- “Report of Invention” means a complete and appropriately signed document describing the sole or joint Creation of an Invention, prepared in accordance with a form promulgated and issued by USask Research Excellence and Innovation from time to time as a “Report of Invention” form.
- “Net Consideration” means gross consideration received by the University from Technology Transfer activities less Disbursements. Net consideration does not include securities in corporations such as shareholdings but does include cash proceeds of sale of such securities. Notwithstanding the foregoing, Net Consideration does not include revenue received by the University as compensation for the delivery of research services or in aid of research or scholarly activity in accordance with usual practices or any overhead component of such compensation to the extent that such overhead is usually charged to purchasers or sponsors of research or scholarly activity.
- “Technology Transfer” means assigning, selling, licensing, or otherwise transferring from the University to a third party: (i) rights, title, or interests in or to an Invention; and/or (ii) materials, wares, or services the making or delivery of which requires the exercise of rights in or to an Invention.
- “University Resources” means and includes resources owned, administered, or controlled by the University including, premises, equipment, other facilities, University-employee- (including faculty employee) and University-student time, effort and assistance, funds, including gifts, grants and contractually allocated funds received or accessed through the University, and other resources.
1.1 Inventions Policy – Faculty and Staff
- University faculty and staff may create (e.g., models, research results) in the course of employment or through use of University Resources.
- As a condition of employment, faculty and staff are required to sign an agreement with the University called the “Memorandum of Agreement Respecting Inventions”. By the terms of this agreement, faculty and staff agree to transfer to the University their interests (ownership) in any Invention.
- If any Commercialization of an Invention is to be considered the Invention must be reported to the University by filling out and submitting a “Report of Invention” form to USask Research Excellence and Innovation. Once this form is received, USask Research Excellence and Innovation will evaluate the Invention to determine whether it has potential for intellectual property protection and to determine whether there is likely to be a commercial market for the Invention.
- If USask Research Excellence and Innovation elects to seek to Commercialize the Invention, USask Research Excellence and Innovation will require the creator(s) of the Invention to sign forms that assign their rights in the Invention to the University (i.e., transfer ownership of their intellectual property rights to the University). USask Research Excellence and Innovation will then seek to Commercialize the Invention and protect the intellectual property associated with the Invention, as appropriate. USask Research Excellence and Innovation will bear all associated costs.
- If USask Research Excellence and Innovation chooses not seek, or to abandon, Commercialization of an Invention; the University will waive assignment or assign back to the inventor(s) the interests earlier assigned to the University (i.e., ownership of the intellectual property will be returned to the inventors).
- Fifty percent (50%) of the University’s Net Consideration from Commercialization of an Invention is returned to its inventor(s) who are affiliated with the University (faculty, staff, students) as personal income. When there is more than one inventor, this 50% will be distributed equally among all of the inventors unless all of the inventors agree among themselves on another scheme for such distribution.
1.2 Inventions Policy – Graduate Students
The University recognizes that graduate students may create manifestations of new ideas/knowledge (e.g., models, research results) in the course of their studies, jointly with other University staff or other students or independently. To maintain the integrity of the University’s research enterprise, into which graduate students are fully integrated, and with a view to treating students and fairly, the University of Saskatchewan’s policy respecting inventions made by graduate students in the course of their studies is to apply obligations and benefits identical to those applicable to its faculty and other staff (see Inventions – Faculty and Staff). That is:
- If any Commercialization of an Invention made by a graduate student during the course of his or her studies, in whole or in part, is to be considered, the Invention must be reported to USask Research Excellence and Innovation by way of its Report of Invention form.
- If USask Research Excellence and Innovation elects to seek to Commercialize the Invention, USask Research Excellence and Innovation will require that the inventor(s) assign their interests in the Invention to the University, and it will provide to the inventor(s) the forms required to finalize an assignment to the University.
- USask Research Excellence and Innovation will seek to protect and Commercialize intellectual property in reported Inventions as it determines is appropriate and will bear all associated costs.
- If USask Research Excellence and Innovation elects to not seek or to abandon Commercialization of an Invention the University will waive assignment or assign back to the inventor(s) the interests earlier assigned to the University.
- Fifty percent (50%) of the University’s Net Consideration from Commercialization of an Invention is returned to its inventor(s) as personal income.
- With respect to jointly created inventions, the portion of the University’s Net Consideration payable to inventors will be distributed among them equally unless all of the inventors agree among themselves on another scheme for such distribution.
1.3 Inventions Policy – Undergraduate Students
Currently, intellectual property created by undergraduate students in the course of their studies remains the property of the student. The University does not assert any interest in these intellectual properties. However, current situation is in the process of reevaluation in light of plans to significantly increase the engagement of undergraduate students with the University’s research enterprise.
Please note, however, that when undergraduate students undertake paid employment with the University; for example, by working in a research laboratory, either during the summer or while attending classes, they are employees of the University. If the undergraduate student invents or contributes to the Creation of an Invention in the course of such employment, the inventions policy of the University with respect to staff will apply (see Inventions – Faculty and Staff).
2. ABOUT COPYRIGHT
The word “copyright” describes a variety of rights that can exist in relation to various “works” as recognized in the Copyright Act of Canada. There are four types of works:
- “artistic works”, which includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship and works of architecture (buildings).
- “dramatic works” which includes pieces for recitation or mime, choreographies, scenic arrangements, acting forms and visual works expressed in forms such a films or analogous means;
- “musical works” which includes any work of music or musical composition, with or without words; and
- “literary works” which includes all written forms, including computer software code
Although members of the University community create all types of works, almost all of them create literary works (e.g., journal articles, reports, theses).
For copyright to exist in a work the work must be:
- fixed (e.g., in some form writing or other script (this includes recording on a tape or digital storage medium)); and
- original to the author (created by the author through the exercise of some skill and judgment and not copied from a work of another).
Copyright arises automatically when an original work is expressed in a fixed medium (no other acts need to be carried out and there is no formal registration or application process needed to obtain copyright protection). Nevertheless, it is sometimes useful to provide notice of the copyright with a notation on each page, or on the first (title) page, in the form following:
- if published – “ © [or the word ‘copyright’], Jane Doe, 2008 [year of first publication]”; or
- if unpublished – “ © [or the word ‘copyright’], Jane Doe, unpublished”.
The Copyright Act is complex, the rights of copyright holders are many and varied, and some rights exist in relation to only certain types of works.
The “economic rights” of a copyright holder include the sole right to:
- produce or reproduce (copy) the work, or any substantial part thereof;
- perform the work, or any substantial part thereof, in public;
- publish it, if the work is unpublished;
- produce, copy, perform, or publish any translation of the work;
- adapt the work to another form (e.g., book to film); and
- communicate the work to the public by telecommunication.
Note that, within the meaning of the Copyright Act, “publication” means making available to the public. This definition is much more inclusive that merely being in a magazine, journal or book. Publication includes, for example, oral presentation (e.g., in a seminar open to the public) or on a web site (personal or otherwise).
In addition to the economic rights, the author of a work has certain so-called “moral rights.” These are:
- the right to remain associated with the work (by name or pseudonym) as its creator to the extent that such association is reasonable given the nature of the work, or the right to be anonymous;
- the right to preclude any distortion, mutilation or other modification of the work that is prejudicial to the honour or reputation of the author; and
- the right to preclude the use of the work in association with a product, service, cause or institution to the extent that such association is prejudicial to the honour or reputation of the creator.
Note that the economic rights are typical property rights – they vest in the “copyright holder” who may be a purchaser of the rights from the author, but the moral rights vest only in the author – they cannot be transferred to another person, but they can be waived (given up) in whole or in part.
Copyright gives rights to creators while providing access to the protected works by users. Canadian copyright law is intended to strike a balance between the interests of these two groups. For creators, the law is intended to ensure that they have control over their creations. For users, the law sets out certain conditions and terms under which an original work may be legally copied, translated, performed, adapted or displayed, in whole or in part, for purposes of research, private study, criticism or review, news reporting, or instruction. Also, the public is entitled to use works after copyright expires – it is not perpetual. In Canada, the term of copyright varies somewhat based on the type of work and the circumstances of its creation and publication but usually, copyright (both economic and moral rights) lasts for:
- the life of the author; plus
- that portion of the year of death that follows the date of death; plus
- 50 years.
2.1 Copyright Policy – Works used at the University of Saskatchewan, and Created by Third Parties
See the policy statement on “Use of Material Protected by Copyright.”
2.2 Copyright Policy – Works Created at the University of Saskatchewan
- University of Saskatchewan Faculty – Faculty members retain copyright in most works created in the course of employment (other than works created through performance of assigned duties – these rights belong to the University) in accordance with the collective bargaining agreement between the University and the University of Saskatchewan Faculty Association.
- Non-Faculty Staff – The University is the first holder of copyright in works authored in the course of employment by its non-faculty staff.
- Students - Retain copyright in all works created in the course of studies unless, in the case of graduate students, a research contract in support of a student’s work provides otherwise.
- Note that it is possible that an individual may have more than one relationship with the University. For example, an individual may be a student and also an employee of the University (e.g., tutorial or laboratory instructor or assistant). In these circumstances, copyright in works created pursuant to the employment relationship (e.g., exam forms, a laboratory manual or a report) would be held by the University. Note also that receipt of a graduate student stipend in aid of study (scholarship, bursary, or from a research grant) does not create an employment relationship.
- Note also that the University is careful to ensure that no student is prejudiced in his or her ability to complete an academic program, including publishing results of thesis-related research or studies in a timely manner. Graduate students should inquire about the sponsorship terms of their faculty supervisors.
3. PLANT BREEDERS’ RIGHTS
The University is one of Canada’s premier crop and horticultural plant variety breeders. Most plant varieties developed at the University of Saskatchewan are developed through the Department of Plant Sciences and, principally, it’s Crop Development Centre.
3.1 Plant Breeders’ Rights Policy
- The University holds plant breeder’s rights (under the Plant Breeders Rights Act, if a variety is produced in the course of an individual’s employment, the “Breeder” is the employer).
- The Department of Plant Sciences retains all revenues from commercialization of plant varieties developed under its auspices and reinvests that revenue in capital and operating costs of the plant breeding activities of its staff (this revenue allocation scheme has been expressly approved by Departmental staff).
Plant varieties developed by faculty, staff, and/or graduate students in other Departments are commercialized through USask Research Excellence and Innovation, which distributes revenues in accordance with the scheme applicable to inventions.