Spinoff Toolkit: Reporting an Invention
This is the formal start of the commercialization process. If patentable IP was created at the university, the inventor must complete a confidential Report of Invention (ROI) — the first step in protecting that invention and IP. After reporting, inventors can begin commercialization, licensing or selling that IP. Reporting complies with external contractual requirements and the university’s Patent Policy and may also be required to comply with sponsored research agreements. Inventors can easily file and sign a ROI with the help of the university’s Technology Transfer Services (TTS) office and using the Inventor Portal.
Reporting is sharing just enough detail about your invention so that patentability and commercial potential can be evaluated. The report describes the idea/invention, identifies inventor(s), funding details, if any public disclosure has occurred, and other related agreements so ownership and rights can be determined.
Please note: Unless there is a specific written agreement stating otherwise, the inventor(s) own the newly created intellectual property. When reporting, inventors may choose between two IP ownership options:
- Commercialize the technology through the university, which assigns ownership of the technology to the university, wherein the university supports and assumes responsibility for commercialization. In this case, TTS will provide IP assessments, help form IP strategy, cover initial patent filing costs (if applicable), and undertake commercialization activities like marketing and licensing.
- Commercialize independently, where the inventor retains ownership of the technology and assumes responsibility for commercialization and associated costs. If the IP remains with the spinoff, these costs will be borne by the inventor, but less royalty revenue from the spinoff will be shared with the university. The TTS team is still available for information and support for inventors who choose to assign IP to a spinoff.
There are a variety of reasons for choosing either ownership structure. Notably, revenue sharing between the university and inventors differ under both options as per the Commercialization of Patentable Intellectual Property Procedure, except when the technology is commercialized through a spinoff company. Please visit the Create a Spinoff page for a detailed outline and FAQ for this process.
University of Alberta Policies & Procedures
- Patent Policy
- Commercialization of Patentable Intellectual Property Procedure
- Conflict Policy--Conflict of Interest and Commitment and Institutional Conflict
- Declaring Best Interests of Inventor Section 10 Variation of Patent Policy Procedure
University of Alberta Resources
Technology Transfer Services (TTS): The innovation and commercialization process can be complex and sometimes daunting; TTS’s role is to provide inventors with support and information during their commercialization journey. The TTS team provides inventors with assistance during the commercializing, marketing and licensing of new technologies by providing market assessments, patentability assessments and connection to potential industry partners. Inventors are encouraged to contact TTS when an invention takes place and before completing a ROI.