Spinoff Toolkit: IP Protection

At this stage, inventors must make decisions on how to best protect and manage their IP. In many cases, IP is the foundation of a company’s business’s value. Protection usually involves patent, copyright and/or trademark application. However, this may not always be necessary, and sometimes legal costs outweigh the protection benefits. In any case, inventors are encouraged to devise a formal IP strategy to address future business decisions, including when and where to seek IP protection. The estimated cost for an initial patent filing (typically a US provisional patent application) is approximately $5,000, but can vary. Fees must be regularly paid to keep a patent active, so the longer a patent’s life is, the higher its lifetime cost will be. Additionally, patents are country-specific, meaning that patent applications must be filed in each country that protection is desired. A Canadian patent will not grant protection in the USA, for example. Inventors often file patent applications for a host of countries (though this can be expensive) because patents are time sensitive, and the granting of a patent outside of a “grace period” (often 6 months or 1 year, depending on the country) may affect patentability in other jurisdictions.  For more information on policies related to IP at the University of Alberta visit the Intellectual Property FAQ

If the inventor has assigned IP to the university, TTS will undertake IP protection (including initial patent filing costs if applicable).   

If the inventor has retained IP independently, they are responsible for IP protection costs including patent filing. 


UAlberta Policies

 

UAlberta Resources

The Innovator’s Handbook also includes a detailed description and breakdown of the spinoff commercialization process.

The Copyright Office provides information and support for students, faculty and staff at the university for all inquiries related to copyright.

 

External Resources

The Canadian IP Office offers several free resources for IP support:

  • IP Academy - an online repository of IP educational tools including webinars, online learning modules and a custom IP Strategy builder
  • IP Agent finder includes an agent directory and support links
  • The IP toolbox offers roadmaps, assessment and evaluation guides for IP owners