ICE works closely with the Division of Research and Graduate Studies (RGS) to support the research activities of Acadia faculty and students by facilitating collaborative research with industry partners and by disseminating research results through commercialization and knowledge transfer activities.
For details on how ICE assists researchers click on OUR SERVICES:
Acadia's Office of Industry & Community Engagement provides a number of services for researchers:
Partnering Researchers with Industry, Government & Community Groups
A primary activity of ICE staff is to partner Acadia researchers with companies and government organizations for a wide variety of research/service/consulting projects. This occurs when we respond to industry requests for research assistance, following visits to companies to determine their research needs, or when researchers approach ICE to obtain assistance finding external partners.
Help Identifying Research Funding Sources
ICE can help you identify research funding that is appropriate for a variety of different research collaborations with external partners. These sources include federal and provincial government funds that are available for university/industry collaborations (i.e. NSERC, IRAP), as well as private sources. Please contact us for additional information.
Providing Intellectual Property Advice, Protection & Training
Another significant activity of ICE includes providing intellectual property-related advice, protection and training to faculty, staff and students. The term “intellectual property” can be defined as the materials or communicable results of intellectual activity or scholarly inquiry. Intellectual property can be such things as inventions, computer software, trade-marks, databases, courseware, literary, artistic, musical, or visual works, and know-how. Successful commercialization requires that your intellectual property be properly protected at a very early stage, due to the fact that its value may be enhanced by the legal protection offered by patents, trademarks, copyright, etc. ICE can provide advice to researchers on whether intellectual property protection is possible and/or advisable.
Identifying and Assessing Technologies
Technologies are often identified through informal discussions with faculty members (or students) about their research programs, or when faculty members disclose technologies to ICE via an Invention Disclosure Form. Following this, an initial market assessment will be completed, which includes conducting basic market research and (confidential) discussions with market/industry experts. Faculty members who have developed technologies with commercial potential may be encouraged to explore IP protection and/or early stage commercialization/prototype funding.
Funding Prototype Development
ICE can help faculty members identify appropriate funding sources to develop or test proof-of-concept inventions which may have commercial potential. Some of these funding sources include: Springboard Patent and Proof of Concept Awards, InNOVAcorp Early Stage Commercialization Fund and the NSERC Idea to Innovation (I2I) and CIHR PoP grants.
Marketing Technologies Ready to be Commercialized
At an early stage in the commercialization process, external partners will be identified and contacted to help determine the value of the technology and whether there is interest in licensing the technology. It is extremely important to get feedback from industry partners as soon as possible; this feedback can provide valuable input into product development as well as help guide commercialization efforts.
Negotiating & Drafting Agreements
ICE assists in developing and negotiating a wide variety of industry-related research and commercialization agreements. More common agreements include: Confidentiality Agreements (often called NDA’s), Material Transfer Agreements; Collaboration Agreements, Sponsored Research Agreements, Service Agreements, Consulting Agreements, Facility Use Agreements, MOU’s, IP Agreements, Option Agreements, License Agreements, etc.
We have included a list of some of the more common funding sources below. Please contact us to discuss your specific research program or technology. Based on the type of project, we may be able to identify additional sources of funding.
Below is an outline of the steps involved in the Acadia commercialization process. Please feel free to contact ICE for further details.
The first step in the commercialization process usually involves an initial meeting between the Director of ICE and the faculty member. During this informal meeting the faculty member will be encouraged to talk about their research and their intentions regarding commercialization. The Director may offer advice on IP protection in the case of patentable inventions, and general information about the potential commercial viability of the IP. If the faculty member would like to continue to the next step, the Director will forward an Invention Disclosure Form to the Faculty member.
Obtaining a written disclosure via Acadia’s Invention Disclosure Form is an important step in the commercialization process. This form gathers a variety of information about the invention, including detailed information about the inventors (ownership), dates, potential applications for the technology, names of potential licensees, etc. Information obtained via this disclosure does not constitute a public disclosure and will not affect patentability (if applicable).
Based on the information obtained from the Invention Disclosure Form, an initial market and technical evaluation will take place to determine whether a market exists (or will exist) for this technology. Information gathered includes: initial patent and literature searches, information on market trends, competitive products, potential licensees, etc. Various sources of information will be utilized, including: the faculty member(s) who will assist in the process; industry contacts; databases; technology transfer professionals; and the Internet. Based on this information, a preliminary decision will be made on the commercial potential of the technology, and whether or not ICE would like to be involved in the commercialization efforts.
Faculty members, who would like to work with the university (through ICE) as their commercialization partner, will then execute an Assignment Agreement to transfer their IP ownership to Acadia University. This will allow Acadia to act on their behalf when pursing potential licensees. This Agreement will outline the rights and responsibilities of the faculty member(s) and Acadia, revenue shares, warranty provisions, etc.
Intellectual Property Protection (if Appropriate)
Following assignment, a decision will be made on the need for legal protection of the IP and the most appropriate method (i.e. patent, copyright, trademark, etc.) In the case of a patentable invention, a Provisional Patent Application may be filed to reduce costs. This allows for a one year period in which to file a full patent application and/or find a licensee who will agree to bear the costs of full patent application.
Following assignment, a commercialization strategy will be developed that outlines the planned approach to commercialization. This will usually be in the form of licensing the technology to established commercial partners. The strategy will be developed with the input of the researcher, and will include details on the following: R&D requirements, estimated market potential, IP protection strategy, technology valuation, marketing plan, etc.
Marketing the technology to industry involves a number of activities - all targeted toward finding a licensee. How and to whom we market an IP opportunity will depend on the wishes of the researcher(s). During this phase a non-confidential IP profile will be developed with the help of the faculty member. This document will highlight non-confidential information about the technology, the stage of development, the researcher(s) involved, and the market opportunity. This profile will be used for first-level information when targeting potential licenses. It will also be published on the ICE web site and other on-line technology listing services as appropriate.
The most common method of commercializing university IP is through licensing the technology to a successful commercial partner. ICE will contact appropriate companies to assess their interest in obtaining a license for the intellectual property or patent rights (in the case of patentable inventions). Names of potential licensees come from many different sources - the most common being inventor contacts. Other sources of potential licensees include meetings or trade shows, trade publications and networking contacts. A number of these companies will be approached to discuss non-confidential aspects of the technology and the market opportunity.
If certain companies show an interest in the technology, they will be asked to sign a confidentiality agreement before detailed discussions or product demonstrations take place. Licensees are evaluated and ultimately chosen based on a number of factors, including their ability to manufacturer, market and sell the technology. Whenever possible, companies from Nova Scotia and Atlantic Canada will be approached as potential licensees.
If an approached company needs time to evaluate the technology, an option agreement may be signed to give them the first right to license the technology after a defined period of time, or after certain conditions are met (i.e. further product development, prototyping, etc.). The terms and conditions of license agreements vary dramatically, and are negotiated on a case-by-case basis. The license will outline exactly what rights the licensee will obtain via the license. It will be exclusive or non-exclusive and it may be restricted by field of use (by market or by application) or by geographic territory. Financial consideration for the license may include up front payments, royalties, equity, etc. Other items that the Agreement covers include: term of the agreement, warranties, product improvements, etc.
It should be noted that a license does not give up ownership of the IP. Rather, it gives the commercial partner the right to use, manufacture and/or sell the technology subject to agreed upon terms and conditions. If these terms and conditions are not fulfilled the license may be terminated or adjusted to meet the changing needs of the licensee.
Ongoing License Management
After the Licensing Agreement is signed, ICE will continue to monitor the license to ensure that all parties to the agreement are fulfilling their obligations. These obligations can include meeting of deadlines, keeping proper records, accurate and timely payment and royalties, appropriate marketing and sales efforts and prompt delivery by the researcher of any updates and improvements.
Royalty rates depend on a variety of factors such as the value of the invention, the stage of development, the cost of commercializing the invention, market size, profit margins and whether the license is exclusive or nonexclusive. Proceeds from licensing income are shared between the inventor and Acadia University pursuant to Article 33.21 of the Faculty Collective Agreement. When two or more inventors are identified, each shares equally in the income unless the inventors agree on an alternative distribution scheme.
While licensing is Acadia’s preferred approach to commercializing intellectual property, there may be some cases where it is appropriate to create a start-up or spin-off company to commercialize the technology. Typically, if the IP is a platform technology with broad market applications it may be a good candidate for a start-up company. In this case, ICE can assist with general advice, business plans, market research and access to capital. Please contact ICE for further details.
Standard License Terms:
Field of Use/Exlusivity
Ideminification and Warranties
This Guide to Protecting Intellectual Property has been prepared for the Canadian University Intellectual Property Group (CUIPG) as a means to provide the Canadian university community with information on matters pertaining to intellectual property.
The Canadian University Intellectual Property Group is a group comprising the Directors of Intellectual Property/Industrial Licensing offices at the following Canadian universities: British Columbia, Alberta, Waterloo, Western Ontario, Toronto, Queen's, Montreal, McGill, and Laval.
Intellectual Property simply defined is any form of knowledge or expression created with one's intellect. It includes such things as inventions, computer software, trademarks, literary, artistic musical or visual works and even "know-how".
Inventions may be protected by Patent and Registered Industrial Design. Software, literary, artistic and musical works may be protected by Copyright. The initial ownership of Intellectual Property, in most cases, resides with the creator of that Intellectual Property, but in many cases, rights are assigned to the university. Policies with respect to Intellectual Property vary at different institutions and all readers are encouraged to review the policy of their respective institutions relating to ownership, the obligation to disclose, sharing proceeds from commercialization and conflicts of interest. Traditionally, universities in North America have allowed their faculty members to retain their Copyright in literary, artistic and musical works.
Most inventions and software created at Canadian universities are based on research primarily sponsored by some form of government funding. There is, therefore, some onus on those who own that Intellectual Property to make efforts to ensure that it is utilized for the benefit of the public at large. That, in most cases, requires protection and commercialization through, if possible, a Canadian-based firm. Intellectual Property Management offices have been established at most research-intensive universities to provide advice and services to the university community to facilitate the protection and commercialization of Intellectual Property.
The economic and social value of inventions and software generated from university research has clearly been demonstrated. Most of the major discoveries giving rise to the birth and growth of lasers, semi-conductors, super-conductors, computers and biotechnology have come from university research. As Canadians, we must learn to capitalize on the knowledge which is created within our university and hospital communities if we are to be competitive in the years ahead. In order for this to happen, researchers and administrators must have an awareness of the importance of inventions and software, what should be done to protect these types of Intellectual Property and how the Intellectual Property can best be exploited to benefit the Canadian public.
What is a Patent?
A Patent is a right granted by a national government, upon application, and in exchange for a complete disclosure of an invention. The disclosure is initially a confidential disclosure to the patent office, which later becomes a non-confidential disclosure to the public at large. A patent grants to the applicant the right to exclude others from making, using or selling the claimed invention for a limited period of time. In Canada, for example, it is 20 years from the date of application, for applications filed since 1 October 1989. In the United States, the term is also 20 years from the date of the first filed U.S. application; however, for applications filed since 29 May 2000, the term may be extended based on any delays in issuance of the patent caused by the U.S. Patent and Trademark Office.
What is Patentable?
By law, in order to be patentable, an invention must be novel, it must not be obvious to a person skilled in the field of the invention, and it must have utility.
Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these, such as new uses of known compounds, are patentable subject matter. Novel genetically engineered lower life-forms and new microbial life-forms can be patented in some jurisdictions, such as the United States and Canada, but not in others.
In February 1996, the Canadian Patent Office issued a decision that a genetically engineered non-human mammal is not patentable subject matter. This decision was overturned by the Federal Court of Appeals in August 2000, and leave has recently been granted to appeal to the Supreme Court of Canada.
Methods of medical treatment are also patentable in some jurisdictions, such as the United States, but not in others, including Canada. Mere scientific theorems or principles and methods of doing business or playing games are not patentable subject matter in Canada. Provided that software can meet the usual criteria for patentability, it can be patented in some jurisdictions.
Provided that software can meet the usual criteria for patentability, it can be patented in some jurisdictions. In practice, however, it is difficult to meet the novelty requirement and software patents are not very common. The preferred form of protection for software is by way of Copyright.
New plant varieties can be protected under the Plant Breeders' Rights Act in Canada or by a Plant Patent in the United States. Some other jurisdictions, but by no means all, have equivalent legislation.
Integrated Circuit Designs can be protected in the United States under the Maskworks Protection Act. Canada has the Integrated Circuit Topography Act. Other countries are considering similar legislation.
How Do Foreign Patents Work?
Patents do not cross national boundaries and, at present, there is no such thing as an International Patent. Harmonization of the world's patent laws is progressing rapidly, but in general, each country grants its own patents based on its own standards. The Paris Convention of 1887 facilitates the filing of applications in member states by according to all applications filed in member states for a specific invention the same effective filing date as the first filed application, provided that the foreign applications for the invention are filed within one year of the filing date in the first member state. This is very important when considering the effect of publication in a scientific or other journal on a foreign patent application. Almost all industrialized countries are signatories to the Paris Convention.
In Europe it is possible at the European Patent Office to file a single application (in English, French or German) to protect one's rights in up to 18 European countries. A single regional patent is granted but is not effective until it is ratified in each National Patent Office selected by the applicant by paying the appropriate national fees, translating into the local language, and meeting local requirements as to form of claims, etc.
As mentioned above, one of the criteria for patentability of an invention is that the invention must be novel, i.e., no prior public disclosure of the invention has been made by the inventor or others. Most developed countries follow a policy of absolute novelty, i.e., no patent can be obtained if the invention has been publicly disclosed in any manner, anywhere in the world.
Canada and the U.S.A., however, provide a grace period of one year from the first public disclosure of the invention, during which the inventor can file a patent application, provided that the disclosure was made by the inventor or someone who obtained the information from the inventor. Few other countries are as generous to inventors and it is advisable, therefore, not to disclose the invention to anyone until a patent application has been filed. Disclosure can, however, be made on a confidential basis and such disclosure will not affect the ability to patent.
It should be noted that for U.S. patent applications, a sale in the U.S. (or even an offer for sale) of an invention will destroy novelty if the sale or offer for sale is made more than one year before the filing date of the patent application. This holds true even if the offer for sale in the U.S. is made under a confidentiality agreement.
What is Public Disclosure?
It is the relationship between the parties that determines whether the disclosure is public or made in confidence. The disclosure is legally confidential if, when receiving the information, the receiving party personally understands and accepts a duty to keep the information confidential. A disclosure to an academic colleague may or may not be considered confidential depending on the understanding between the parties. Any printed publication in a newspaper, scientific journal or other written form available on an unrestricted basis is a public disclosure, as is an oral presentation at a public meeting. Published pre-prints or abstracts of (a) papers for a scientific meeting or (b) degree theses are also considered public disclosures.
What Constitutes Public Disclosure?
A written or oral public disclosure can be used as a prior art reference by a patent office examiner evaluating a patent application if enough of the invention is disclosed to enable a person skilled in the relevant field to put the invention into practice. Such disclosure can also be used by a Court to invalidate an issued patent. In some countries, experimental use of the invention in public will count against patentability.
It is advisable to disclose an invention to your institution's Intellectual Property Management Office before the details of the invention are included in any grant application. Disclosure to the Intellectual Property Management Office will be confidential. Although disclosure in a grant application does not represent public disclosure, at least in Canada, reviewers will be exposed to the invention and represent an unnecessary threat to patentability. In the United States, grant applications may be considered public documents under Federal Freedom of Information legislation.
Copyright is the exclusive right of the creator, or subsequent copyright holder, to reproduce a work. Copyright subsists as soon as an artistic, literary or musical work or software is created, and registration at the Copyright Office is purely voluntary. It is, however, advisable to put the public on notice that the creator is claiming Copyright by marking all copies of the work with a Copyright Notice.
Registration of a Copyright facilitates the Copyright holder's rights in the event of a legal dispute.
Copyright protection in Canada lasts for the life of the creator plus fifty (50) years. Copyright extends to other countries by virtue of treaties such as the Berne Convention and Universal Copyright Convention and the term in other countries depends on the national law.
Know-How and Trade Secrets
A researcher's know-how can often have considerable value. A researcher will often possess valuable confidential know-how and experience to permit commercial optimization of a process or product. Know-how or trade secrets can, in fact, be licensed independently and a know-how license need not be restricted to the term of any patent.
Confidential information and know-how should, therefore, be clearly defined and disclosures should be covered by a written contract.
Confidentiality Agreements and Biological Material Transfer Agreements
An invention may be disclosed prior to filing a patent application, provided it is covered by a Confidentiality Agreement between the inventor and the party to whom the invention is disclosed. Such agreements provide evidence of the receiving party's understanding of the confidential nature of the information and express in written form the receiving party's obligation to keep the information in confidence. These are simple agreements and can be obtained from your institution's Intellectual Property Management Office.
Biological Materials can be used to develop modified or derivative products from the original materials. It is important to control the use of transferred biological materials, and standard material transfer agreements are now being used by most institutions in North America. You should consult your institution's Intellectual Property Management Office before you transfer any biological material to any academic or industrial collaborator/researcher.
Invention Disclosure (Confidential)
When should I disclose?
Most countries, including Canada, operate under a "first-to-file" patent system. That is, when two or more applications for patent for the same invention are pending, the patent will be granted to the first applicant to file a patent application.
The United States operates on a "first-to-invent" system, i.e., the patent is granted to the person able to prove the earliest date of invention, regardless of the date of filing of the patent application. Previously under U.S. law, a date of invention could only be established for (a) work done in the United States or (b) the date of introduction of the invention into the United States if the work were done outside of the United States. However, under the North American Free Trade Agreement (NAFTA), Canadian and Mexican inventors can establish a date of invention based on work done in either Canada or Mexico on or subsequent to 1 January 1994. If the invention date is prior to 1 January 1994, the old rules apply. Taking this a step further, under the General Agreement on Tariffs and Trade (GATT) (Uruguay Rounds), inventors in any World Trade Organization (WTO) country can, with certain provisos, establish an invention date for work done in a WTO (GATT) country on or subsequent to 1 January 1996. Here, again, the old rules apply for work done before this date. It is important therefore that you discuss your invention with your Intellectual Property Management Office as early as possible in order to establish an invention date, and certainly before any publication, including abstracts, has taken place.
How Do I Make an Invention Disclosure?
Your first step should be to contact your institution's Intellectual Property Management Office to indicate that you feel an invention has been made. Each university has a different Intellectual Property Policy and your disclosure may be handled slightly differently depending on the institution.
You will be asked to complete an Invention Disclosure Form which has been standardized by Canadian universities. The form is attached as Appendix A; disks are also available from your institution's Intellectual Property Management Office in order to facilitate completion of the form.
An inventor is a person who has had an original idea or otherwise contributed intellectual input to one of the claims of a patent. A patent application may be filed naming one or more inventors. A person who works under the direction of another and does not contribute any original thought to the claimed invention, i.e., "works as a technician" to confirm an invention, must not be named as an inventor. Professional collaborators may or may not contribute to the inventive concept being claimed and great care should be taken in deciding who should be named as an inventor. It is important to understand that inventorship is a legal matter, not a collegial matter -- not all co-authors of a publication need be co-inventors. Collaborators not deemed to be co-inventors can, however, be recognized through some sharing of the net proceeds from the invention. If you are in doubt as to inventorship, your Intellectual Property Management Office should be consulted and a professional opinion obtained.
What Searching Should Be Done?
An extensive literature search should, of course, be done before any research project is undertaken. Once an invention has been made, you should update your literature search and, if possible, supplement it with a review of the patent literature. All available literature should be drawn to the attention of the Intellectual Property Management Office. The Intellectual Property Management Office will, if appropriate, arrange for a detailed patent search, usually in the United States Patent Office.
Before an institution's Intellectual Property Management Office devotes considerable resources to protecting and exploiting an invention you will most likely be asked to assign your invention to the institution or its designate. An assignment is a legal document which transfers ownership of your intellectual property to the institution, and it is recorded in the Patent Office.
The Intellectual Property Management Office normally bears the initial cost of protecting and exploiting your invention. If it is successful in generating income, the first charge on that income is reimbursement of the costs. Thereafter, income will be divided between the Institution and the inventors. The inventor's return will vary depending on your institution's Intellectual Property Policy. You may expect anywhere from 25 - 50% of the net proceeds.
A sharing agreement should be put in place and lodged with the Intellectual Property Management Office at the outset to formalize how the inventor(s) will share their proceeds. There is no reason why an inventor cannot allocate a portion of his/her proceeds to someone who has contributed to the development of the invention but who is not formally considered an inventor.
The Intellectual Property Management Office will have a number of possible ways to attempt commercialization of the invention. If suitable, the invention may be used to facilitate the formation of a new company to develop the technology. If the invention is not suitable for new venture creation, a licensee(s) may be sought to commercialize the invention under license. Licenses can be arranged in a variety of ways, but almost all will include some form of continuing royalty.
An inventor can play a critical role in commercializing the invention. The inventor will normally be relied upon to participate in scientific discussions with potential commercial partners and, on occasion, may be actively involved in negotiating a particular deal. Participation by an inventor will, however, always be subject to the policy of each Institution.
If we haven’t listed a question you have below, please feel free to contact us or drop by the office.
I am interested in collaborating with industry partners but not sure how to connect with them – what are the next steps?
Please contact ICE – we can help connect you to companies and industry research funding programs.
What are some potential sources of funding for industry related projects?
Review the potential list of RESEARCH FUNDING sources by clicking on the link above.
What is intellectual property (IP)?
The term "intellectual property" can be defined as the materials or communicable results of intellectual activity or scholarly inquiry. Intellectual property can be such things as inventions (technologies), computer software, trade-marks, databases, courseware, literary, artistic, musical, or visual works, and know-how. For more information, please see Intellectual Property Primer
If I work with a company on a research project will I own the resulting IP?
This depends on a variety of factors, including who is funding the research and the individual arrangements agreed to with the company. Please contact ICE for further information.
Where can I find Acadia’s IP Policy?
Acadia’s current IP policy is outlined in Article 33 of the Collective Agreement.
Will my discussions with ICE about my idea or technology be held confidential?
Yes! All discussions relating to intellectual property are held in strict confidence.
Who owns what I develop? What if there are multiple inventors?
Generally speaking, faculty members own the intellectual property they develop at Acadia. There are exceptions to this however; for example, IP developed in partnership with staff, IP developed during industry sponsored research projects, etc. These exceptions can be found in Article 33.03 within Article 33 of the Collective Agreement. If there are multiple faculty members (and/or students) involved in a project there may be multiple inventors. ICE can help you sort out intellectual property ownership.
Do I have to disclose IP to ICE?
As per Article 33 of the Collective Agreement, Acadia faculty members are required to disclose intellectual property (inventions). If faculty members are interested in commercializing their technology, they may choose to do so themselves, or assign their technology to ICE to undertake commercialization efforts on their behalf.
What are the benefits of commercializing IP through ICE?
ICE has a successful track record of commercializing Acadia technologies. We encourage you to chat with faculty members who have previously worked with ICE. In addition to in-house legal and business expertise, ICE has access to an entire network of commercialization professionals through the Springboard Network, as well as access to funding programs that will help you advance your technology.
How do I disclose?
The Invention Disclosure Form can be found HERE
When should I disclose an invention to OTL?
You should complete an Invention Disclosure Form whenever you feel you have discovered something unique with potential commercial value. This should be done before disclosing the technology via publications, conferences, etc.