Purpose

To clarify the rights to Intellectual Property that is created or developed by Members of the University and the obligations of Members to the University, third parties and other Members with respect to the transfer and commercialization of such Intellectual Property.

Scope

All Members of the University and all forms of Intellectual Property developed by its Members with the exception of students who are in programs that include co-operative education work-terms or internships where the students are hired as employees of external organizations. In such cases, the policies of the employer or conditions set out in the letter of employment shall apply.

Definitions

Academic Staff Member (ASM) — A Member whose terms and conditions of employment are defined in the MUN–MUNFA Collective Agreement.

Agreement — An agreement that includes terms or conditions respecting Intellectual Property or Intellectual Property Rights, including the rights of third parties.

Assignment — A partial or full assignment of Intellectual Property Rights to any party or a grant to any party of contingent or future right(s) to receive an assignment of any Intellectual Property Rights (such as an option or right of first refusal).

Benefit — Include, but are not limited to, up-front payments in respect of incurred costs, sharing of royalties on commercialization, equity in spin-off companies, or other contributions toward the teaching and research mandate of the University as may be agreed upon.

Commercial Purpose — Includes the direct or indirect use of Intellectual Property or Intellectual Property Rights in order to generate revenue.

Creator — The Member(s) who creates, designs, discovers, invents or authors Intellectual Property.

Data — The recorded factual material commonly accepted in the scientific or academic community as necessary to support the University's research activities or validate research findings.

Direct Costs — Include, but are not limited to, the stipends, salaries and benefits for research personnel, including faculty, staff, postdoctoral trainees and students, materials and supplies, travel, equipment, purchase of specialized services, and subcontracts.

Incidental Use of University Resources — Includes the use of University email accounts or other common IT and/or communication services (i.e. telephony, fax, internet, WiFi), use of common spaces or services provided freely to all by the University (i.e. cafes, lounges, library access, common meeting areas) and use of personal computers, laptops, tablets, mobile devices and other commonly used hardware and software. Incidental Use of University Resources includes use of University resources (i.e. space, facilities, equipment, support personnel) that are freely available to Members and for which use by a Member would not preclude access to, or support from, the resource by other Members that would normally be provided by the University.

Indirect Costs — Include, but are not limited to, building use and depreciation, utilities, equipment depreciation, physical plant and maintenance (including hazardous waste disposal, security, (custodial services),insurance, pre- and post-award research support and administration, financial administration (including purchasing, accounting, claims processing), human resources administration, and common resources (including libraries, computing services, and technical services). Such costs may be incurred centrally, at the unit level, or a combination of both. Recognizing that the provincial operating grants to universities and tuition fees do not cover the actual Direct and Indirect Costs of Research at universities, the Government of Canada implemented the Research Support Fund (formerly called the Indirect Costs Program) to provide payment of the Indirect Costs based on the Direct Cost funding received from the tri-council funding agencies, including Canadian Institutes of Health Research (CIHR), the Natural Sciences and Engineering Research Council of Canada (NSERC), and the Social Sciences and Humanities Research Council of Canada (SSHRC). For Memorial, the Research Support Fund contributes an Indirect Cost payment of approximately 25% of the Direct Cost funding provided from selected tri-council funding agency programs. For all other funding sources, the Indirect Costs shall be calculated and charged in accordance with the policy on Indirect Costs of Externally Funded Research.

Informed Consent — Consent given by an individual who has received the information necessary to allow a considered judgment and has been given a reasonable opportunity to consider such information without having been subject to coercion, undue influence, inducement or intimidation. The process to be followed for obtaining the Informed Consent of a Member who is a graduate student or postdoctoral fellow shall be as established by the Dean of the School of Graduate Studies or delegate. The process to be followed for obtaining the Informed Consent of a Member who is an undergraduate student shall be as established by the Provost or delegate. The process to be followed for obtaining the Informed Consent of all other Members shall be as established by the Administrative Head(s) for the Member(s). In the case of Research, the process for obtaining Informed Consent shall also be approved by the Vice-President (Research), or delegate.

Intellectual Property — Includes all 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, and includes the media on which such Intellectual Property is stored, obtained or received.

Intellectual Property Rights — Any and all proprietary rights anywhere in the world provided under (i) patent law, (ii) copyright law, (iii) design patent or industrial design law, (iv) semi- conductor chip or mask work or integrated circuit topography law, (v) trade-mark law or (vi) any other statutory provision or common law principle, including trade secret law, which may provide rights in Intellectual Property or the expression or use of such Intellectual Property.

License — Any grant of Intellectual Property Rights to any party and includes without limitation a grant of contingent or future right(s) to receive a license or sublicense of any Intellectual Property Rights (such as an option or right of first refusal) but does not include an Assignment.

Member — Any person who teaches, conducts research, studies or works at or under the auspices of the University and includes, without limitation, all employees, all students; and any other person(s) while they are acting on behalf of or at the request of the University.

Moral Rights — As defined by the Copyright Act, R.S.C. 1985, c. C-42, as amended or replaced from time to time.

MUN — Memorial University of Newfoundland.

MUNFA — Memorial University of Newfoundland Faculty Association.

Outside Professional Activities — The application of professional skills and knowledge in the community outside the University as described in the MUN-MUNFA Collective Agreement.

Personal Health Information — As defined in the Personal Health Information Act, SNL 2008, c. P-7.01, as amended or replaced from time to time.

Principal Investigator — The Member who has consented to assume, alone or with another Member(s), primary responsibility for the design, conduct and supervision of a Research project.

Research — Any disciplined enquiry or systematic investigation intended to extend knowledge or to establish facts or principles. It does not include, when undertaken for the University's internal assessment, management or improvement purposes ("Internal Assessment"), quality assurance and quality improvement studies, program evaluation activities and performance reviews, or testing within normal educational requirements. For greater certainty, where data is collected for Internal Assessment but later used for Research purposes, such secondary use of the Internal Assessment data constitutes Research.

Research Agreement — An Agreement pertaining to specific Research. Such agreements may include terms and conditions related to the execution of the Research project (e.g. work plan, schedule of payments) and deliverables (e.g. progress reports, final reports, prototype demonstrations, etc.), as well as terms related to the Transfer of Research results, including any delays in publication, and non-disclosure terms associated with Intellectual Property that is provided to the Research project by third-parties.

Researcher Participation Agreement — An Agreement signed by a Member and by the University prior to the Member participating in Research that confirms that the Member agrees to abide by the terms and conditions of Research Agreements.

Significant Documented Contribution — A financial or in-kind contribution of funding by the University toward the conduct of Research. Such contributions would be beyond Incidental Use of University Resources by Members and would be documented prior to the start of the Research, normally as part of a Research proposal or Research Agreement, or during the disclosure of Intellectual Property by the Member under this policy. Such contributions would include dedicated or extraordinary use of existing institutional equipment, facilities or support staff for the purpose of conducting the Research. They would also include the Direct and Indirect Costs of facilities and equipment that are purchased and support staff that are hired specifically for the Research. Significant Documented Contributions, however, do not include the financial contributions provided to the University by the Sponsor of the Research, including any third-party funding agencies (e.g. NSERC, SSHRC, CIHR, RDC, ACOA), nor the Indirect Costs provided through the Research Support Fund. The University shall not consider the time of ASMs who conduct the Research as part of their normal work load as a Significant Documented Contribution.

Sponsor — An organization that enters into an agreement with the University related to the creation of Intellectual Property.

Transfer — A License or Assignment of Intellectual Property or Intellectual Property Rights or any part thereof.

University — Memorial University of Newfoundland.

University Activities — Activities carried on by a Member in the course of their employment or association with the University, or using University funds, facilities, equipment or other.

Works — Any Intellectual Property in which copyright subsists, including literary works, dramatic works, musical works, artistic works and computer programmes.

Policy

1.0 Preamble

Consistent with the University’s Statement of Vision, Mission and Values, the University supports the following principles associated with Intellectual Property created by Members of the University:

1. Members must have the freedom to pursue their teaching, scholarly and research activities based on their individual and collective intelligence, curiosity, inventiveness, and creativity.
   
   
2. Subject to the terms of Agreements, the Creators of Intellectual Property should own their Intellectual Property and should be beneficiaries of commercialization and other exploitation of their Intellectual Property.
   
   
3. Given that all of the University’s activities are to some significant extent publicly funded or subsidized, the Creators of Intellectual Property must have the ability to publish and present their research results in the public domain in order to contribute to the body of public knowledge in their disciplines.
   
   
4. Given that all of the University’s activities are to some significant extent publicly funded or subsidized, all Intellectual Property developed under the auspices of the University must remain available at no cost to the University for its future research, teaching and educational activities.
   
   
5. The Intellectual Property Rights of others must be respected, including the rights of Members, the University and its obligations to third parties (e.g. Sponsors of Research), and the rights of others who have contributed to the development of Intellectual Property.
   
   
6. The Transfer of Intellectual Property represents an important form of dissemination that complements other more traditional forms of dissemination, such as scholarly publications or presentations.
   
   
7. Benefits to the University from the Transfer of Intellectual Property for Commercial Purposes shall be commensurate with the documented investments made by the University toward the creation of the Intellectual Property. Such investments may include payment of Direct and Indirect Costs or in-kind contributions such as access to facilities or equipment. It is recognized that the Direct and/or Indirect Costs or costs associated with the operation and maintenance of facilities or equipment is often covered, in full or in part, through a combination of the annual operating grant provided to the University by the provincial government, and through specific grants or contracts provided to the University by government departments or agencies, external organizations and/or the private sector. Where such costs have been covered or have been offset through other Benefits, the University shall have no expectation for additional Benefits for the University from the Transfer of Intellectual Property. There are, however, situations where the University may make Significant Documented Contributions toward the creation of Intellectual Property that warrant a sharing in Benefits from the Transfer of Intellectual Property for a Commercial Purpose.
   
   
8. Members may, based on Informed Consent, choose to participate in work that is subject to Agreements that place constraints on how their Intellectual Property may be disseminated or subsequently used.

2.0 Ownership

2.1 Subject to the remainder of this Policy, Creators shall own the Intellectual Property Rights in Intellectual Property they create and, where there are two or more Creators, they shall co-own such Intellectual Property Rights.

2.2 Where Collective Agreements, employment contracts or official admission letters from the University to students or postdoctoral fellows include language related to Intellectual Property Rights that conflicts with this Policy, the language of a Collective Agreement, employment contract or offer of admission shall apply for the Intellectual Property Rights of Members subject to that Collective Agreement, employment contract or admission letter. For Members who are subject to Collective Agreement terms that are different from the terms in this Policy, the Member may be required to get the written consent of their bargaining agent to vary their rights under the Collective Agreement in favour of the terms and conditions provided for in this Policy. Obtaining such consent is the sole responsibility of the Member. Alternatively, the University and a Member's bargaining agent may enter into a Memorandum of Understanding (MOU) related to the application of this Policy for Members in the bargaining unit. Such MOU that are in effect from time to time shall be available on the Vice-President (Research) web page.

2.3 For Members who are staff hired to provide administrative, scientific, or technical support for University Activities, excluding Marine Institute Research Scientists, the University shall solely own the Intellectual Property Rights associated with Intellectual Property created from University Activities. In the case of Intellectual Property developed by such staff during the course of Research, the University will assign to the Creator(s) of such Intellectual Property the corresponding Intellectual Property Rights that the University does not need to retain to meet its obligations under Agreements. Such assignment shall occur as soon as practicable upon receipt by the University of a written request from the Creator(s) and shall be subject to the rights retained by the University pursuant to section 2.6.

2.4 Where an Agreement contains a License or Assignment by the University, the University solely owns the Intellectual Property Rights that are the subject of such License or Assignment. The University will assign to the Creator(s) of such Intellectual Property the corresponding Intellectual Property Rights that the University does not need to retain to meet its obligations under that or any other Agreement. Such assignment shall occur as soon as practicable upon receipt by the Vice-President (Research), or delegate, of a written request from the Creator(s) and shall be subject to the rights retained by the University pursuant to section 2.6. Where a Member has signed a Researcher Participation Agreement related to Research involving the Member, the terms of the Researcher Participation Agreement shall apply for the Member for that Research.

2.5 Where the University specifically commissions the creation of Intellectual Property, it shall solely own the Intellectual Property Rights in that Intellectual Property. Such commissions by the University shall be communicated in writing to the Member at the time of commissioning. Where the Member is an ASM, the rights of the University and the ASM with respect to the commissioned work shall be as set out in Article 28 of the MUN-MUNFA Collective Agreement.

2.6 The University acknowledges the right of Members to assign or license copyright in Works to third parties for the purpose of scholarly dissemination, subject to applicable Research Agreements. The University retains a fully paid-up, perpetual, non-exclusive, royalty-free right to use, reproduce and make all Intellectual Property created by its Members for non-commercial research, teaching and educational purposes of the University; provided, however, the right granted to the University pursuant to this section shall not apply to:

1. Work where the grant of such a right would impede the ability of a Member to assign or license their copyright in the Work to a third party for the purpose of scholarly dissemination;
   
   
2. Intellectual Property invented, produced, authored or created solely by one or more ASM’s; provided this exception will not apply in respect of a Work that is specifically commissioned by the University, in which case the rights of the University and the ASM(s) shall be as set out in Article 28 of the MUN-MUNFA Collective Agreement; or
   
   
3. Any Personal Health Information.

In all cases, the use of Intellectual Property is subject to applicable laws and ethical requirements. Where a Member that is subject to this Policy plans to collaborate with any other person(s) in co-creating Intellectual Property, the Member shall ensure that the other person(s) are made aware, prior to the collaboration, of the University’s right in such Intellectual Property as described in this section.

2.7 Intellectual Property and records created by an academic administrator in relation to the administrative responsibilities of the position, and all Intellectual Property Rights therein, are the sole property of the University and therefore must remain with the University when the term of the administrative appointment ends.

2.8 In the event of the death of a Member, their rights under this Policy shall revert to the estate or succession of the Member.

2.9 Except as may be provided under an Agreement, Members shall retain Moral Rights to their Intellectual Property. A Member may waive their Moral Rights in writing in favour of the University or any other party.

2.10 For Intellectual Property created by a Member that was previously disclosed to the University in accordance with this Policy and the associated Procedures, and for which the Vice-President (Research) has signed the Intellectual Property Disclosure Form, upon the written request of that Member, the University shall confirm in writing any Intellectual Property Rights owned by the University. Such written confirmation shall normally be provided to the Member within 5 working days from receipt of the written request by the Vice-President (Research), or delegate.

2.11 Subject to respecting the Intellectual Property Rights and other rights of other Members, the University and third parties (e.g. Agreements with Sponsors), Academic Staff Members (ASMs), and other Members who are permitted to do so, may utilize their Intellectual Property in their Outside Professional Activities. Members wishing to utilize Intellectual Property that they co-own with other Members shall obtain the Informed Consent of those other Members prior to utilizing the co-owned Intellectual Property in their Outside Professional Activities. The use of Intellectual Property shall not include the Transfer of Intellectual Property or Intellectual Property Rights except as provided for under Article 3.0 of this Policy. Such use shall also be subject to the terms described in Article 21 of the MUN-MUNFA Collective Agreement. When engaging in Outside Professional Activities, the Member shall ensure that they do not represent themself as acting on behalf of the University. The University will assume no liability for any action brought against a Member as a result of Outside Professional Activities or use of Intellectual Property in Outside Professional Activities.

2.12 Except as expressly set out in a written Agreement duly executed by an authorized representative of the University, the University and its Members disclaim all liability in respect of Intellectual Property and Intellectual Property Rights therein, and makes no representations or warranties of any kind, whether direct, indirect, collateral, statutory, express or implied, as to any Intellectual Property or Intellectual Property Rights therein, nor as to the merchantability or fitness for a particular purpose, or non-infringement of any other party’s proprietary or Intellectual Property Rights, of any Intellectual Property or Intellectual Property Rights therein.

3.0 Research Agreements

3.1 The University may enter into a Research Agreement with a Sponsor that varies from the principles set out in this Policy or provides for a Transfer of Intellectual Property or Intellectual Property Rights to the Sponsor or other third parties. Before doing so, the Principal Investigator(s) may be required to sign a Researcher Participation Agreement pursuant to which the Principal Investigator(s) agrees to participate in the Research that is subject to the terms of the Research Agreement and to abide by the terms of the Research Agreement.

3.2 The Principal Investigator(s) of any Research that is the subject of a Research Agreement shall not permit any Member who is not subject to section 2.3 of this policy to participate in such Research without first ensuring that the Member has given Informed Consent to participate in the Research in accordance with the terms of the Research Agreement and signs a Researcher Participation Agreement..

3.3 The University may enter into Research Agreements that provide for defined Benefits for the Creators of Intellectual Property, Transfer of Intellectual Property Rights to Sponsors or other third parties, and Benefits to the University in respect of Significant Documented Contributions by the University toward the Research. Where the University and a Sponsor enter into a Research Agreement, the following principles shall normally be reflected in the terms of such Research Agreements:

1. When the University will not make a Significant Documented Contribution in support of the Research, the University will not expect any Benefit for the University with respect to the Transfer of Intellectual Property or Intellectual Property Rights to a Sponsor for a Commercial Purpose. When negotiating a Research Agreement and based upon the direction of the Principal Investigator, the University may seek terms that provide Benefits to the Creators of Intellectual Property in respect to the Transfer of Intellectual Property or Intellectual Property Rights to the Sponsor. Upon receipt from the Sponsor, such Benefits shall be shared proportionately among the Creators of the Intellectual Property.
   
   
2. When the University will make a Significant Documented Contribution, the University will negotiate Research Agreement terms that provide for the University to receive Benefits with respect to the Transfer of Intellectual Property or Intellectual Property Rights to the Sponsor for a Commercial Purpose. Such Benefits would be commensurate with the contributions made by the University and would be used in support of future Research at the University. In addition, based upon the direction of the Principal Investigator, the University may also negotiate Research Agreement terms that provide Benefits to the Creators of Intellectual Property in respect of the Transfer of Intellectual Property or Intellectual Property Rights to the Sponsor. Such Benefits shall be shared proportionately among the Creators of the Intellectual Property upon receipt from the Sponsor.

4.0 Modification of Intellectual Property Rights

4.1 Subject to respecting the Intellectual Property Rights and contributions of other Members and the University, as well as the Intellectual Property Rights of third parties (e.g. as per Agreements with Sponsors), a Member is free to Transfer their Intellectual Property Rights in accordance with this Article 4.0.

4.2 Subject to the remainder of this Article, any Transfer of Intellectual Property Rights by one or more owners of those Intellectual Property Rights requires the prior Informed Consent of all owners of the Intellectual Property Rights and the prior written consent of the Vice-President (Research) or delegate. The consent of the Vice-President (Research), or delegate, may not be unreasonably withheld. All Members shall adhere to the Procedure for Transfer and Commercialization of Intellectual Property. This section shall only apply to Intellectual Property (a) that has been created solely by one or more ASM’s with a Significant Documented Contribution from the University, (b) that has been created or contributed to by one or more Members who are not ASM’s, or (c) in which the University holds rights, including the rights set out in section 2.6 of this Policy. Where Intellectual Property is the subject of Article 28 of the MUN-MUNFA Collective Agreement, the rights of the University in that Intellectual Property shall be as set out in that section.

4.3 Any Transfer of Intellectual Property Rights shall be in accordance with the University’s Conflict of Interest policy.

4.4 Subject to the terms of any applicable Agreement and any ethical or legal requirements, Creators of Intellectual Property shall be free to publish and/or present that Intellectual Property in academic journals and other vehicles of scholarly dissemination and to assign or license copyright in any academic Work to academic journals and other vehicles of scholarly dissemination. Scholarly dissemination of research results shall comply with the principles discussed in the Tri-Agency Framework: Responsible Conduct of Research. Consideration should also be given to accepted practices that may exist within the corresponding academic discipline with respect to authorship and acknowledgement of the contributions by others.

5.0 Dispute Resolution

5.1 If a dispute arises between a Member and the University with respect to the application of the Policy, the Member and the Vice-President (Research) shall attempt to resolve the dispute informally.

5.2 If a dispute cannot be resolved informally, the dispute shall be referred for decision to a panel composed of one member nominated by the Member, one member nominated by the Vice-President (Research) and one member selected by the first two or, in the absence of an agreement between them, by the President of the University. The Member and the Vice- President (Research) will be permitted to have a representative act on their behalf before the panel.

5.3 Until a decision is given by the panel, no action shall be brought by a Member against the University, or by the University against the Member, on any matter arising out of this Policy.

Related Documents

Vision, Mission and Value
MUNFA Collective agreement
TAUMUN Collective Agreement
LUMUN Collective Agreement
Conflict of Interest policy
Indirect Costs of Externally Funded Research policy
Researcher Participation Agreement (Academic Staff Members)
Intellectual Property Disclosure Form

Procedures: