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Procedure for the Transfer and Commercialization of Intellectual Property

Approval Date: 2019-05-09

Effective Date: 2019-05-09

Responsible Unit: Office of the Vice-President (Research)

View Amendment History

Definitions

Recipient — The licensee, sublicensee, transferee, assignee or other recipient of any Intellectual Property or Intellectual Property Rights that are the subject of a Transfer.

Procedure

  1. Where a Member wishes to Transfer Intellectual Property or Intellectual Property Rights in Intellectual Property and the University retains one or more rights in such Intellectual Property, the Member shall first complete and submit to the Vice-President (Research) an Intellectual Property Disclosure Form with respect to such Intellectual Property. Where a Member wishes to avail of support from the University with respect to the Transfer, the Member must complete both Part 1 and Part 2 of the Intellectual Property Disclosure Form. If the support of the University is not sought, only Part 1 must be completed. Signoff on the Intellectual Property Disclosure Form by the Vice-President (Research), or delegate, shall constitute the consent of the Vice-President (Research) to a proposed Transfer.

  2. The Vice-President (Research), with the support of the Dean of the School of Graduate Studies where one or more graduate students or postdoctoral fellows have been or may have been involved in the creation of Intellectual Property, and the Provost where one or more undergraduate students have been or may have been involved in the creation of Intellectual Property, shall assist Members in identifying the owners of the Intellectual Property Rights and in determining the contributions of each Member to the development of such Intellectual Property.

  3. Where the University has made a Significant Documented Contribution in support of the development of the Intellectual Property or Intellectual Property Rights to be directly transferred by a Member independent of the University, the University shall be entitled to a repayment, either immediately or over time, of the Significant Documented Contributions. This may take the form of a sharing of the future Benefits received by the Member in relation to the Transfer of Intellectual Property or Intellectual Property Rights. This sharing of Benefits may take the form of sharing of royalty payments received by Member(s), sharing of equity in spin-off companies formed by the Member(s), or other benefits as agreed upon in writing between the Vice-President (Research) and Member(s). The University shall have 120 days commencing on the date of receipt by the Vice-President (Research) or delegate of a properly completed and signed Intellectual Property Disclosure Form in which to notify the Member(s) who have signed such form that a Significant Documented Contribution has been made in support of the development of the Intellectual Property or Intellectual Property Rights that are the subject of such form. If no such notification is made, or if the University notifies the Member(s) that no such Significant Documented Contribution was made, the Member(s) may proceed with the Transfer subject to section 4 of these Procedures. If such notification is made, then the Member(s) and the University shall agree in writing upon the manner in which the University will receive its repayment of the Significant Documented Contribution. Until such agreement is reached, the Member(s) shall not proceed with the proposed Transfer.

  4. With the exception of Intellectual Property or Intellectual Property Rights Transferred to a third party by the University pursuant to an Agreement, a Member Transferring Intellectual Property or Intellectual Property Rights shall ensure that any Recipient signs the University’s Disclaimer Agreement. The Member shall sign and return to the University the completed Disclaimer Agreement prior to affecting the Transfer to the Recipient.

  5. Except where the University has obligations under a Research Agreement with respect to Intellectual Property or Intellectual Property Rights, Members holding Intellectual Property Rights may wish, but are not obliged, to avail of assistance (e.g. initial assessment of commercial potential, market analysis, patenting support, business planning, assistance with licensing, etc.) from the University with respect to the transfer and commercialization of Intellectual Property or Intellectual Property Rights.

    1. Through the Research Innovation Office (RIO) and other offices at the University, the University has some resources available to provide assistance to Members.

    2. Where Members wish to avail of assistance with the Transfer of Intellectual Property, the Members must complete Part 1 and Part 2 of the Intellectual Property Disclosure Form.

    3. At the request of Member(s) wishing to avail of assistance based on completion of Part 2 of the Intellectual Property Disclosure Form, the RIO will coordinate with other offices of the University to perform an initial assessment of the Intellectual Property and will confirm with the Member what additional support that the University is able to provide to the Member.

    4. Any additional support from the University will be based on a written agreement between the Member and the University with respect to support to be provided and any future sharing of Benefits between the Member and the University arising from the Transfer of the Intellectual Property. This may take the form of sharing of royalty payments received as a result of the Transfer, equity in spin-off companies formed by the Member, or other compensation as agreed upon between the University and the Member. The University shall not seek to share in Benefits in respect of providing assistance where the costs of providing such assistance has been covered through some other source of Direct and/or Indirect funding to the University.

  6. The Vice-President (Research), Dean of Graduate Studies, and Provost may delegate their authority described in these procedures. Members should consult with the Vice-President (Research) web page for further information about delegation of authority described in these procedures or in the policy on Intellectual Property.

Policies using this procedure:

Procedure Amendment History

There are past amendments for this policy:

Action: PUBLISHED
Date: 2019-05-21 14:56:47
This procedure was automatically published when the policy "Intellectual Property (ID:345)" was published.
Action: Created full working copy
Date: 2023-06-14 08:56:52
To update name of Research Innovation Office
Action: REPLACED
Date: 2023-06-14 08:59:12
This procedure was replaced with a new version. Comment provided: Name updates