Elements of a Workable Intellectual Property Policy OPIC IP Roundtable Noel Courage Bereskin & Parr November 21, 2007

University Innovations  generating new knowledge written works, science  knowledge = intellectual property

University Innovations = IP  written works = copyright manuscripts, technical drawings, computer code  science = patents, trade secret circuits, software, mechanical devices, drugs, diagnostics

Intellectual Property  copyright is automatic  trade secret protection lasts as long as the secret  patents – have to register (expensive) most university inventions go into public domain – no IP

Inventions Policy  encourage capture of small portion of university IP for commercialization  public benefit  set out support structure to help scientists commercialize with university (mandatory or optional)

Rulebook  who is covered - all staff, students?  require disclosure of IP to institution  assert ownership of institution; option for return of rights to inventor  process for commercialization - licensee or spin-of company  distribution of revenue - fair sharing encourages commercialization

If No Inventions Policy…  "Common law" provides general principles employees own their inventions unless hired to invent independent contractors – own their inventions  Best to have policy and require new workers to agree to policy at time of hiring

Scope of Policy is Variable  all inventions made in the course of employment  broader add-on: all inventions made using institution resources

Policy Does Not Cover All Research  contracts with research sponsors may alter inventions policy  consulting work for third parties often excluded  inventors and institutions can make own agreement

Success Story  Amorfix (Toronto)  diagnostics for prion diseases (mad cow, CJD), Alzheimer’s, ALS  technology developed at university, hospital  Amorfix has partnerships with industry (Biogen), universities, hospital

Mosaic of IP – Cooperative Relationship  hybrid – multiple institutions and inventors  UofT – institution owns, but inventor can compel reassignment  UHN – institution owns

Ownership  UofT inventors take reassignment of ownership and transfer ownership to Amorfix  UHN retains ownership of its UHN inventor rights – license to Amorfix

Ingredients for Success Under Inventions Policy  early identification of IP at UofT, UHN  no public disclosure before patenting  assess inventorship and patentability  file patent application  coordinate timing of publications to follow patent application filing  assign/license ownership promptly  research grants, industrial partners

Ingredients for Success Under Inventions Policy  good relationship - ongoing communication with licensor (UHN) to show that Amorfix is in compliance with license terms and making progress in commercialization  new inventions, improvements made outside Amorfix are disclosed to institutions and then Amorfix

Hot Spots to Beware  inventor commercializes and does not disclose to institution  commercialize without proper determination of inventorship  commercialize without filing quality patent application  commercialize without permissions and freedom to operate analysis

Hot Spots  expenses – government fees, attorney fees, consultants  third party liability  inventor does not follow through on research contract obligations  dispute resolution/termination

Hot Spots – Future Research and Collaboration  inventor, licensee or spin off company shelving technology or not paying money  third party getting overly-broad IP rights under research agreement  overbearing confidentiality and non-use clauses  clear obligations for when licensors/spin-off companies have to pay royalty  clear rights to terminate upon default or missed milestones

Applying Legal Aspects of Inventions Policy More Effectively  educate researchers on policy, rights  identify and protect IP properly  move commercialization, IP and agreements along efficiently and boldly  terminate - don’t throw good money after bad  can't be proactive if have too many projects

Applying Legal Aspects of Inventions Policy More Effectively  Keep moving up the learning curve on IP and legal aspects – call in support when necessary  Hope for the best, but also think about and prepare for the worst when making agreements to commercialize