Creating a Spinoff

Commercializing a university research innovation is one way to transfer that discovery and knowledge into real-world applications that create social and economic growth and value. Commercializing can take many forms, the two most common are licensing to an existing company, or creating a spinoff. Regardless which you choose, both begin with completing a Report of Invention (ROI). The university’s Technology Transfer Services team can help you explore what works best for you. They can also help with ROI disclosure.

If you think your research has created a new innovation, it is important to submit an ROI before any public disclosure about that discovery (e.g., publication, talk, poster) because that disclosure could affect your invention’s protection.

The University of Alberta's spinoff creation process is outlined below, followed by some frequently asked questions.


Assign IP to university

TTS team assesses commercial and patent potential

TTS team initiates patent filing if applicable at university’s cost

Enter standardized spinoff agreement to license IP to your spin off

Select standardized deal structure:

Royalty

Blended

(Royalty & Equity)

Equity

Keep IP ownership

Inventor arranges IP assessment and protection at inventor’s cost

Inventor initiates patent filing at inventor’s cost

Enter standardized spinoff agreement to license IP to your spinoff

Select standardized deal structure:

Royalty

Blended

(Royalty & Equity)

Equity

Licensing Frequently Asked Questions

I want a company to license my innovation

What is a spinoff company?

A UAlberta spinoff company is a legal entity, distinct from university, which meets the following criteria:

  • derives a considerable portion of its commercial activities from the application or use of a technology originating from research activities conducted at UAlberta;
  • is not controlled by UAlberta, but in which the university may have a non-controlling equity stake and/or a royalty stake; and
  • which has signed, in addition to all appropriate commercial documentation, a relationship agreement with UAlberta to address conflict of interest arising from the involvement of UAlberta personnel in the new spinoff.
Why would I assign IP ownership to the university?

Commercializing via the university involves transferring IP ownership to the university in exchange for the university assuming responsibility for managing commercialization. Versus commercialize independently (where you own the IP and assume responsibility for commercialization and associated costs).

When assigning to the university, the TTS team will assess patentability and cover initial patent costs (subject to limits). The university will also prepare and sign the legal agreements required to grant the spinoff use rights to the technology through a license agreement.

Why would I keep IP ownership? (independent commercialization)?
Commercialization independently means keeping IP ownership and assuming legal and financial responsibility for patent assessment, initial patent filing and the preparation of legal agreements to transfer the IP to the spinoff.
Can the university help me make a decision on IP ownership?
Yes, through the TTS team. They can help you understand the implications of both options. The final decision, however, is yours to make. You can also seek independent counsel before making a decision.
Will the university support my spinoff even if I choose to keep the IP?
Yes, support services are available regardless of the IP ownership path chosen. 
Why are the spinoff standardized terms (i.e., the revenue sharing formula) the same for the two options (IP owned by me versus assigned to the university)?
If IP is assigned to the university, limited IP services (see question 1) are provided to the inventor/spinoff at no additional cost. This also recognizes the fact that, regardless of which IP ownership path you choose, the bulk of the commercialization work and cost is undertaken by the spinoff. Thus, in the standardized terms, the inventor’s obligations to university have been set at the value of independent commercialization, which is 1/3 of net revenue as outlined in the Patent Policy.
If I assign my IP to the university, will the university license or assign my IP to my spinoff?
UAlberta licenses the IP under terms and conditions that must be met by the spinoff. Meaning, if the spinoff becomes unable to commercialize the technology, the university and inventor can choose to end the license and pursue other technology commercialization opportunities. However, the standardized license agreements also include provisions for future assignment of IP (to the spinoff) based on clear milestones.
What does the university do with the revenue it generates from spinoffs?
The university reinvests its revenue back into commercialization support and services.