Foundations of IP Strategy

A researcher needs to understand what rights they have – they need to know whether they have an invention that is patentable and whether they have the right to file for patents and continue to improve the outcomes from their research and be able to commercialize what they have developed. 

Here is a very common situation which could easily be avoided with clear policies and effective communication between campus commercialization entities:

• In one example, involving an Ontario university, the university claimed rights in a patent issued to student researchers despite the fact that under the University’s IP policy, the inventors were to own the technology which the university helped them develop. 
• Despite of this, the university advanced a claim over the patents even where the university’s own campus incubator helped the researchers secure the patent. 
• So one might ask, what happened to cause the University to sue its former students over the patents?

Well, it’s because the research was funded by an industry partner and pursuant to the agreement with the funder, the rights in the IP generated through the funded research were granted to the university with the funder retaining licensing rights. 

Unfortunately, the student researchers had developed the technology in the context of this arrangement but were unaware of the agreement between the University and the funder when they went ahead and patented their invention. 

This case highlights the need for researchers, especially student researchers, to understand, from the outset, what rights they have in the research that they are involved in undertaking. 

It is important that there is complete transparency and that they know what questions to ask and who to ask them from.

Another important consideration for researchers if they want to leverage their patents is to be careful about what they disclose about an invention or research in a public forum. 

This is because if this information is made available before their patent is legally protected then that may impact whether a patent can be obtained for the invention. 

We discussed patents and disclosure in a previous module but in the context of research institutions this issue is especially complex because of the push to disseminate research through conference presentations and publications. 

Therefore, researchers who want to preserve their ability to patent may want to either make sure that they have non-disclosure agreements in place before disclosing information or alternatively file for a patent before any allowable grace period for the disclosure expires. 

It should be noted that there have been instances where a university has filed a patent application only to discover that a researcher has already disclosed an invention in the form of a publication and this prior disclosure prevents the patent from being issued. 

To learn more about the implications of researchers failing to understand their rights and obligations please listen to the short clip from Heather Pratt.