Questions and Answers

Intellectual property (IP)
IP refers to the creation or product of the mind or intellectual activity such as inventions, software, trademarks, design, and literary and artistic works. Such IP can be protected by law in the form of patents, copyright, and/or trademarks. UAlberta faculty, staff and students should understand how the university’s IP policies affect them. These documents will help outline this:

What can be protected by IP law?
Things such as inventions, designs, software, literary and artistic works (e.g., sound recordings and performances) can be protected by patent, copyright, trademark, trade secret or other intellectual property laws.
How does the university’s patent policy define ‘invention'?
UAlberta uses the term “Patentable Intellectual Property” (PIP) to refer to inventions. PIP includes patents and patentable ideas that can be legally protected by patent in Canada or elsewhere. To be potentially patentable, PIP should be new, useful and not obvious. For more detail, please refer to the Patent Policy or contact the TTS team.
Who does the UAlberta Patent Policy apply to?
The policy applies to faculty, researchers, staff and students.
Who owns PIP that UAlberta personnel creates?
The university has an ‘inventor owned’ policy - that means the person/persons who created the PIP owns it, unless there is a specific written UAlberta or research agreement to the contrary. The patent policy also gives both the inventor and the UAlberta certain rights.
What if an industry partner created or funded my invention?
During the university’s invention disclosure process, an inventor must identify industry partner support or participation. The TTS team will review the invention disclosure form against relevant contractual or partner agreement obligations. Some funding programs require that intellectual property resulting from a funded project be assigned to the industry partner.
Does the university’s patent policy cover software, machine learning products, or creative products?

There is currently no policy requirement for copyrighted materials (e.g., software, machine learning algorithms, creative works) to be reported to the university. The Association of Academic Staff of the University of Alberta (AASUA) has a copyright regulation which grants open license to the university and use of staff-invented copyright materials; in such a case the inventor is still the owner of the content. This generally applies to teaching materials developed at the university.

Therefore, there are no revenue-sharing requirements for copyrighted material. Inventors are encouraged to report their intention to copyright to the university. In the case where an invention with commercial and/or venture potential (e.g., a software app and algorithm) has been developed and copyrighted, there is still no obligation to disclose such to the university. However, disclosing the invention will allow for opportunities for assessment and business development services from the university. For more information on copyright at the university, visit the copyright office.


Invention disclosure
I have an invention I want to commercialize. How/when must I disclose this to the university?
If you decide you want to commercialize, patent, sell, or license some of your PIP, the Patent Policy stipulates you must disclose this invention to UAlberta. You should do this as soon as possible, as soon as invention or work is clearly conceptualized and you have obtained supporting data. Early disclosure allows time to determine ownership and assess patentability. For the strongest IP protection, you must disclose before you publish or initiate any action to sell, license or assign your PIP to someone else.
How do I disclose my invention to UAlberta?
You complete a Report of Invention (ROI) form and submit it to the university’s TTS team. Inventors can indicate on this form his or her decision to either commercialize independently or assign the invention to UAlberta.  All of this can be done through our Inventor's Portal.
I am collaborating with a researcher from another institution. Where do we disclose?
You will disclose to both institutions. UAlberta inventors complete a Report of Invention disclosure form and submit it to the TTS team.

Patents
Patents provide a time-limited legal right to prevent others from making, using, or selling an invention. It is one of the oldest and most common form of invention/intellectual property protection and can cover many things including a product, machine, process, composition of an improvement of any of these. The Q&As below will provide some general, high-level guidance. Please contact the TTS team for more specific information and guidance.

Do all inventions need a patent?
No, not all inventions require patent protection for commercialization and some may not meet patent protection criteria. Patenting is also expensive--to file, execute and maintain. UAlberta’s TTS team can help you assess patentability and value of patenting for a given invention, then develop the most suitable protection strategy based on that assessment. The team does not start the patent process until that assessment is complete.
Should I file a patent application before approaching potential partners?
Not necessarily, but it’s recommended to have a confidentiality agreement with the potential partner prior to sharing any invention details. TTS handles all confidentiality agreements regarding research and commercialization for UAlberta. TTS will work with you to develop an appropriate IP protection strategy, provided IP has been assigned to UAlberta.
I already disclosed my invention publicly. Is it too late to protect it?
Not necessarily. Some countries offer grace periods that allow an inventor to patent an invention after publishing. Contact the TTS team if you believe your invention has commercial value and you would like to pursue it.

Process
When and why should I disclose my innovation?
Contact a member of UAlberta's Technology Transfer Team to explore potential opportunties as soon as you believe you have a unique discovery or innovation that may have commercial interest or value.

Additional resources