ARTICLE 34 - Patents

34:01          The University encourages the publication of research results, inventions and discoveries, and all other scholarly works in all fields of academic endeavour in a climate of academic freedom and without regard to potential gain from royalties and other such income.

34:02          It is recognized that in the interest of most effective development and utilization of an invention, and for the protection of members and the University, it may be advisable to patent an invention developed in a course of research performed at the University.

34:03          (a)       The University acknowledges that it has no claim or interest in any invention made by a member without the use of the University's facilities, support personnel, support services, equipment or materials or without encroaching upon University time.

(b)     However, the Association acknowledges that the University and/or any external organization or individual which has provided funds and/or equipment for the research which leads to an invention by a member have an interest in any invention made by a member which invention is made, developed or discovered using University facilities, support personnel, support services, equipment or materials or encroaching upon University time or with the use of any facilities, equipment, services, or time funded or provided by such external organization or individual. A member who has made an invention developed or discovered using University facilities, support personnel, services, materials or equipment shall submit a report to the Office of the Vice-President, Research disclosing such use.

(c)       For the purpose of this Article 34, the payment of salary to members, the provision of a normal academic environment in which to work, and the performance of the regular work load shall not be construed as use of the University's facilities, support personnel, support services, equipment or materials or encroaching upon University time.

34:04          A member who has made, discovered or developed an invention, improvement or discovery to which clause 34:03 (b) applies, shall have the sole right to decide:

(a)     whether in consultation with the Office of the Vice-President, Research to seek a patent at all or to allow the public use of her/his invention, improvement or discovery and

(b)     whether in consultation with the Office of the Vice-President, Research and by what means and on what terms to patent, produce or market the invention, improvement or discovery,

(c)     except when a funding or research agreement has been entered into between the University and an external organization or individual, in which case the member's rights shall be as specified in the funding or research agreement to which the member shall be a party and subject to this Article 34. Nothing herein shall obligate the University to expend money or incur other responsibilities except as expressly agreed by the University in this Article 34 or otherwise in writing.

34:05          All inventions resulting from research supported by the University, but excluding any of the services provided by the University under clause 34:03 (c), or under a funding or research agreement, are subject to such entitlement as shall be specified by written agreement between the University and/or external funding organization or individual and the member who is the recipient of research funds, but the economic return to the member in the case of university-provided funds shall be no less than that specified in clause 34:10 and where the funds are provided by an external funding organization or individual shall be as specified in the funding or research agreement.
34:06  A member shall notify the Office of the Vice-President, Research in writing of any and all applications by her/him for letters patent in any and all countries at least thirty (30) days prior to the filing of such application. If this would endanger the timely application for letters patent, the member shall either notify the Vice-President, Research in writing prior to the filing of the application or notify the University by telegram concurrently with the filing of the application whichever can be done earlier. Nothing in this clause 34:06 shall be deemed to remove any rights the University may have with respect to such patent.

34:07          The University shall be deemed to have and the member shall grant to the University a non-exclusive, royalty-free, irrevocable, indivisible and non-transferable right to use solely for the University's internal use any patented invention when such invention was made, discovered or developed using University facilities, support personnel, support services, equipment or materials or encroaching upon University time.  Such right shall not include the right to commercially exploit any such invention or to license anyone so to do except as provided in this Article 34.

34:08          Where a member has decided to patent, produce or market, at her/his own expense, an invention, improvement or discovery to which clause 34:03 (b) applies, before an application for a patent is filed by the member she/he shall negotiate an agreement with the University through the Office of the Vice-President, Research which agreement shall include provisions addressed to the following issues:

(a)        the terms on which the University shall assign all its rights, title and interest in the invention to the member;

(b)        the value of the University's facilities, support personnel, support services, equipment or material or time encroachment by the member involved in the making, discovery or development of the invention, improvement or discovery;

(c)        how and when the University shall receive the amount of the value as agreed in clause 34:08 (b) and the terms of any security or lien which the University shall take to secure the receipt of such amount; and

(d)        any other matter which is appropriate in the circumstances.

34:09          For the purposes of clause 34:08 the member shall initiate a request in writing to the office of the Vice-President, Research, that the University conclude this agreement referred to in clause 34:08. The Vice-President, Research shall within ten (10) days of the receipt of the request in writing communicate, by notice in writing delivered to the member, the University's willingness to enter into negotiation and the name of the negotiator(s) for the University. The member at her/his discretion may appoint a negotiator(s) or represent himself/herself in the negotiation. If the Vice-President, Research fails to communicate in writing the University's willingness to negotiate within ten (10) days, or, if after receiving the reply of the Vice-President, Research the parties to the negotiation fail to reach agreement within thirty (30) days of a written demand to start negotiations delivered by the member to the Vice-President, Research, the member or the University may submit the issue to arbitration, under the Arbitration Act and the arbitrator shall be charged to determine the appropriate terms of this agreement consistent with the principles expressed in this Article 34. The arbitrator may not assign to the University any costs involved in any assignment or render the University liable in any way as a guarantor or otherwise of the said patent, invention, improvement or discovery.
 

34:10          Where a member decides that she/he will not patent, produce or market an invention, improvement or discovery at her/his own expense but consents to the University patenting, producing or marketing the invention, before an application for patent is filed by the University, the University shall negotiate an agreement with the member. This Agreement shall provide that the member shall assign all her/his right, title and interest in the invention, improvement or discovery to the University, subject to the University and member sharing equally in the net income derived by the University from the commercial exploitation of the said invention, improvement or discovery after payment of all fees and expenses incurred by the University in the application for patent, and all other expenses incurred in the commercial exploitation of the said invention, improvement or discovery. However, if the University decides, with the consent of the inventor, to assign the prosecution of the patent application and the commercial exploitation thereof to an outside agency such as Canadian Patents and Development Limited (CPDL), thereby incurring no responsibilities or liabilities or any cost legal or otherwise in prosecuting the patent application, or commercially exploiting the invention, the income returned to the University by the agency under the terms of the then current agreement shall be shared by the faculty member(s) receiving from fifty-five percent (55%) to seventy percent (70%) of such income, the lower amount where the use of University facilities, support services, personnel or time encroachment was substantial, and the higher amount where such use or encroachment was small. Nothing herein shall obligate the University to expend money or incur other responsibilities except as expressly agreed by the University in this Article 34 or otherwise in writing.

34:11          The name of the University shall not be used in connection with inventions, improvements or discoveries without the prior written agreement of the University although nothing shall prevent the member from stating his employment, rank and title in connection with such inventions.  Such statement shall not in any way imply approval, promotion or use of the invention, improvement or discovery by the University and, further, such statement shall be qualified so as not in any way to tend to expose the University to liability in law arising out of or relating to the invention, improvement or discovery.

34:12          Notwithstanding the provisions of clause 34:10, a member, after obtaining written authorization from the President of the Faculty Association, may negotiate an income allocation agreement with the University that is outside the guidelines specified therein.  Any such agreement shall not serve as a precedent.