Intellectual property (IP) is the term generally given to knowledge and created works where ownership or a right to use may be legally protected. It includes proprietary and/or technical information and knowledge, including scientific and technical discoveries and any knowledge in a form which is useful and transferable, and which may be protected by law. It can be legally protected through various mechanisms, including patents, copyrights, trademarks, trade secrets, industrial designs and plant breeders’ rights. The two most commonly used forms of intellectual property protection in the academic research environment are copyrights and patents.

Each academic institution has specific policies regarding ownership of IP arising from research carried out at the institution. These policies usually apply to faculty, students, postdoctoral fellows and staff involved in the research, and they must be consistent with the collective agreement between the institution and its faculty. While institutional IP policies differ with respect to ownership, obligation to disclose, royalty-sharing and conflict of interest, they have a common mandate to facilitate the transfer and commercialization of IP wherever appropriate. In addition to the academic policy, other factors that influence IP ownership include intellectual contributions, financial and in-kind contributions, background IP and conventions within the field of research.

IP created during a research project can be owned by any one, or combination, of the parties involved in and/or supporting the research, depending on the policies of the academic institutions and/or research agreements in place. Access to the research results may fall under any one of the following cases, depending on the policies of the institution and research agreement in place: open dissemination with no restrictions, non-exclusive licensing, exclusive licensing, joint ownership, partial assignment of ownership, or full assignment of ownership.

Whether research at an academic institution is carried out in collaboration with industry and/or other non-academic partners, the industry liaison office should be consulted at the outset. Depending on the scale of the collaboration and the expected outputs, a research agreement may be developed among the parties involved. The agreement covers matters relating to intellectual property, including the rights of each party to ownership and/or access to any IP generated by the project, how the IP will be protected and disseminated, and the impact of IP on publication, confidentiality and liability. All the information to be included in a research agreement cannot be listed here. Individual academic institutions and partners often have specific requirements. The industry liaison office at the academic institution provides advice and services to facilitate the protection, development, transfer and commercialization (the process of putting IP to use) of IP, including the development of the research agreement and negotiation of the terms of the agreement. The industry liaison office should be consulted at the outset.

For all research projects and programs, academic researchers must:

• be familiar with their institution’s policies, and be sure their research is conducted in a manner consistent with these policies;
• inform their research team, including students and postdoctoral fellows, of the institution’s research policies, and ensure that they conduct research in a manner consistent with these policies;
• be aware of their institution’s policy on IP ownership. If the institution’s policy assigns IP ownership to the faculty member, it is important to understand how IP created by or with other research personnel, including students and postdoctoral fellows, is handled;
• identify IP created as part of the research project as an ongoing part of the project management, keep it confidential and develop a plan to manage and protect it before placing it in the public domain. NSERC’s policy does not imply that IP arising from the research must be commercialized; that decision is up to the institution, the researcher and the industry partner(s), if any; and
• as a condition of accepting an NSERC grant, disclose to the institution any IP they expect to commercialize.

As a graduate student or postdoctoral researcher, you conduct research that leads to novel and important findings that can have an Intellectual Property component, and you have certain rights and responsibilities with respect to the IP.

For all Research Projects:

• Be aware that the law grants intellectual property rights to all creators/inventors, irrespective of their status at a university or college and, therefore, graduate students, undergraduate students and postdoctoral fellows, as well as faculty, have intellectual property rights and rights to protection under the copyright and patent regimes.
• Understand that your IP rights are often shared with others, including supervisors, other students and collaborators. The ownership of the IP should reflect the model of collaboration. How these rights are shared will be determined by the requirements of the law, policies of the institutions and the funding agencies, and by conventions of the discipline.
  For example, if the student is working within an established research program and using resources, including supplies, space and funds assigned to the professor, the IP would usually not reside with the student alone. If the student independently came up with the idea for the research and conducted it independently, with the supervisor acting as consultant or mentor, the IP rights could rest with the student, unless the professor, program or granting agency have already defined a different agreement.
• Inform yourself at the outset of your research of the rules, regulations and circumstances that affect your IP rights. Be aware of the specific policies of your academic institution relating to IP, the impact of the conventions of your field, the way your research is being funded and the practices of your supervisor. (Note: Policies can vary from academic institution to academic institution.) In addition to discussions with your supervisor, the office of technology transfer (sometimes referred to as the University-Industry Liaison Office [UILO]) can provide you with advice in order to facilitate the protection and commercialization of intellectual property.
• Be clear at the outset of any restrictions or obligations laid out by any scholarships or grants.
• Keep your academic supervisor promptly and fully informed on research results, and take no steps independently to protect the IP without consulting with your academic institution.
• Keep appropriate research records and documentation. This includes keeping an up-to-date laboratory notebook regardless of whether or not the work gives rise to IP. Notebooks provide evidence of when IP is created and who created it. Consult Rules for Research Notebooks for further information.
• Understand the requirements for confidentiality and the consequences of public disclosure of the research results on the ability to protect IP.
• Understand what constitutes disclosure. Any printed publication in a newspaper, scientific journal or other written form available on an unrestricted basis is considered a public disclosure, as is an oral presentation at a public conference or meeting. Disclosure can also occur by discussing an idea on a non-confidential basis with a colleague, friend or a potential industrial sponsor, or posting on an institutional or personal Web site. In some jurisdictions, disclosure can prevent you from obtaining patent protection on your invention.
• The defense and publication of your thesis constitutes disclosure. If your research is supported by an NSERC grant, the defense of your thesis cannot be delayed for reasons of confidentiality.

The academic researcher must understand that the goals and issues of an industrial partner are different from those of the academic. The goal of the academic is to develop and disseminate new knowledge and to educate, while for the industrial partner, the underlying goal is to make a profit and provide value to their investors and/or shareholders. The industrial partner’s aim is to obtain a competitive advantage from the research collaboration for as long as possible.

It is important to understand how the project and the potential research results relate to the interests of the industrial partner. Usually, the industrial partner must integrate results from many different internal and external sources to address a problem or create a new product or process. Results from an academic research project may only provide one component of a solution. Academic research discoveries usually represent only the first small step toward, and a small fraction of the cost of, bringing a new product or service to market (often as little as 2 percent). Relative cost and risk to the company can be extensive. The significance of the industrial partner’s background IP and the extent of their contribution to the research collaboration, both at the outset and during the execution of the research, must also be recognized. It is important that the researcher and the institution recognize these factors in assessing the value of their IP.

There is a sense of urgency in business, particularly in small and medium enterprises (SME) that generally is not found in academia. The academic researcher should understand the urgency and risk to the partner associated with the research project. Time lines are much shorter in industry than in the institution. Project management, change control and quality standards are more rigorously managed in industry. Time lines may make a project unsuitable for an academic collaboration.

There are different cultures and approaches to handling information within academia and industry. Academic researchers want to submit journal articles relating to their research as quickly as possible. Some industrial partners will want to maintain the confidentiality of the research results for as long as possible; others want to maintain confidentiality of the results until a patent application has been filed. SMEs often protect their formula, process, design, instrument, or data as trade secrets. The requirement for confidentiality of research results should be discussed early in the process to identify whether or not a collaboration can actually take place or whether or not significant differences exist that may not be able to be dealt with during the balance of the negotiation process.

When entering into a research collaboration with an industrial partner, the academic researcher must:

• Understand the culture, the concerns and the issues of the industrial partners described above.
• Ensure that all students and other research personnel working on the research project are informed of the collaborative nature of the project and the terms of agreement with the industrial partner. At the outset, discuss matters including IP, confidentiality, publication, consequences of entering the collaboration, and the disciplinary practice to be followed in connection with these requirements. Consider having each academic participant sign a document saying that this information has been provided and thoroughly explained to him or her.
• Ensure that students are given the opportunity to seek independent advice and are not adversely affected if they decide not to participate in a collaborative project.
• If the research collaboration is supported by an NSERC grant, be familiar with NSERC’s IP policy requirements.
• Keep appropriate research records and ensure that those carrying out research under your direction do so as well. Consult Rules for Research Notebooks for further information.
• Keep the industrial partner informed verbally and in writing of progress on the research and the status of any theses, conference proceedings, presentations and/or publications in preparation, based on the research.
• Agree in advance on the types of changes to the project plan that require informing the industrial partner. Partners should be consulted about significant changes in time lines and objectives for the project.
• Understand the need for confidentiality and the consequences of public disclosure
  • Recognize that the need for confidentiality applies not only to research results, but also to the background IP of the partner. This includes proprietary manufacturing and market knowledge contributed not only at the outset of the project, but also during the execution of the research.
  • Understand what constitutes disclosure. Any printed publication in a newspaper, scientific journal or other written form available on an unrestricted basis is considered a public disclosure. Oral presentation at a public conference or meeting is also considered disclosure. This includes a thesis defense. “Disclosure” can also occur by discussing an idea on a non-confidential basis with a colleague, with a potential industrial sponsor or by posting information on an institutional or personal Web site. Such disclosures in some jurisdictions can prevent you from obtaining patent protection on your invention.  
  • Understand the considerations relating to publication. You can agree to delay publication until a patent application is filed, but the following issues should be addressed: length of the delay (for research supported by an NSERC grant, a maximum delay of six months is permitted); the right of the partner to review the draft publication and the time lines for this review; the right of the partner to remove personal confidential information; the length of time the obligations for confidentiality continue after the end of the research collaboration; and how each partner will safeguard information. 
• Disclose all conflicts of interest between any and all parties at the outset of the collaboration (e.g., do you have a spinoff company that will be involved?).
• Understand the important issues in the negotiation of a research agreement:
  Negotiating an IP agreement is usually done by the institution’s industry liaison office or office of research services, but the researcher should be involved and, hence, must be aware of what should be included in an IP agreement and the ramifications.
  • Understand the importance of negotiating an IP agreement before the research gets underway. 
  • Meet with your partner and a representative of the institution’s industry liaison office during the initial stages of planning for the collaboration. Ensure all parties involved agree on the expectations and understand the terms and conditions that govern the relationship.
  • Be aware that negotiation of an IP agreement takes time and understand the reasonable expectations. Three months negotiation is average. There are often delays in reviewing draft agreements. Academic-industry research agreements are not simple contracts, they are partnership agreements and partnerships take time to negotiate.
  • Identify all individuals and organizations that will be physically or financially involved.
  • In cases where the co-creators of the IP include students and postdoctoral fellows, you have a special responsibility to ensure the resulting arrangements are fair and equitable to these individuals, and to protect their academic and commercial rights.
  • Be aware of the factors that influence IP ownership and access (e.g., intellectual contribution, institutional policies, financial and in-kind contributions; background IP; conventions within the relevant field; the funding bodies; terms and conditions of the funding).
  • Be aware that decisions need to be made about how the research results will be used by the partner.
  • Understand that you must retain the freedom to use the results of the research in teaching and future research.
  • Understand the factors that affect the value of the IP, consult the For Faculty section.
  • Understand the costs of protecting the IP (e.g., patenting and maintaining the patent, and identifying who will be responsible for these costs).
  • Be prepared to discuss the ability of all parties to market and license the IP. These responsibilities should be allocated to the party best suited, based on a reasonable assessment of the capabilities.
  • If the research is supported by an NSERC grant, know the mandatory elements that must be included in the agreement.

Prior to working on any research project involving an industrial partner, ensure that information has been provided to you by your academic supervisor and/or your institution regarding the collaboration. Some points of particular relevance to you as a student are listed in the bullets below. Note: You may be required to sign a research participant agreement indicating that you have been provided with and understand this information. 

• Understand, in general, how the interests and approach of industrial partners can differ from those of academic researchers with respect to motivation, time lines and risk.
• Be aware that you have the right to seek independent advice and not be adversely affected if you decide not to participate in a collaborative project with industry.
• Understand the requirements for confidentiality when working with a non-academic partner and the impact this may have on publication of the research results. See above regarding what constitutes disclosure.
• Recognize that the need for confidentiality applies not only to research results, but also to the background IP of the partner. This includes proprietary manufacturing and market knowledge contributed not only at the outset of the project, but also during the execution of the research.
• The requirement for confidentiality will likely continue after you have left the project and/or the institution.
• Be aware that the academic researchers, including students, must have the rights to use the results arising from a NSERC-funded research collaboration for future research.
• Be aware of any conflict of interest. Doing research in the setting of, or funded by, a company with which your supervisor has links may put you in a conflict of interest situation. This should be disclosed in writing by the supervisor.
• As publications in scientific journals are important to your research record, be aware that publication can be delayed until a patent application is filed. (NSERC permits a delay of up to six months if research is supported by an NSERC grant.) Also be aware that the partner has the right to review draft publications and remove proprietary data.
• Understand your rights as a student with respect to your thesis defense and its publication. If the research is supported by an NSERC grant, NSERC requires that there will be no delay in the thesis defense, so that a student’s graduation will not be affected. The publication of the thesis may, however, be delayed for a fixed period of not more than six months. You must ensure, however, that your thesis supervisor and the industry partner(s) are kept informed of the progress on your thesis preparation and the partner(s) are given sufficient advance warning to enable them to review the thesis.   
• As a member of the research team, you may be required, in some cases, to sign the research agreement that the institution negotiates with the partner prior to the start of the research project. Ensure that it does not contradict any agreement that you may have signed with your research supervisor or institution.

Academic collaborations can be very beneficial for the industrial partner in terms of generating new ideas and important research results, validating the science and/or explaining the science behind the technology. In addition, the collaboration can provide access to potential employees—partners often hire graduates involved in a collaborative project. It is also the case that industry may be more advanced in certain areas than academia, and academic researchers should see industry partners as a useful, up-to-date source of knowledge and wisdom that should be consulted throughout the project.

Due to conflicting needs, not all industrial research is necessarily appropriate for a collaborative research effort suitable for graduate student training or NSERC funding. For example, projects that focus on the application of existing technology, provide routine analysis, collect data without interpreting underlying mechanisms, or provide professional practice or consulting services are not eligible for collaborative NSERC programs that support student training (e.g., Collaborative Research and Development Grants and Industrial Research Chairs). Such projects can sometimes be done through a contract with an academic institution.

The industrial partner needs to be aware of the important differences between industrial and academic research, the concerns and issues of the academic researchers, and the policies of the academic institution where the collaboration is taking place.

The goal of the academic researcher is to develop and disseminate new knowledge and to educate. Tenure, promotion and funding decisions are usually strongly influenced by the number and impact of the researcher’s publications in the scientific literature.

Much of the research conducted at academic institutions is carried out by students and postdoctoral fellows. The participation of students and postdoctoral fellows in academic research projects will have an impact on the structure and scale of a project. Recruiting students and postdoctoral fellows to work on the research may delay the start of the project. Students must take courses and meet other academic requirements, which can affect the progress of the research. Students need projects that involve a challenging academic research question rather than only product developmental activities, and since their graduate studies cover several years, short-term projects may not be suitable. Students may be required to defend their thesis, and all theses will eventually be published by being sent to the academic library and deposited with the National Library of Canada.

Academic institutions across the country have different policies relating to ownership of IP (owned by the institution, researcher owned or combination), and companies may find this an added complexity when working with different institutions. These policies are usually based on the institution’s collective agreement with the faculty.

When entering into a collaboration with an academic researcher as an industrial partner, you should:

• understand the differences in academic and industrial time lines and recognize the other academic obligations (education and publication) of your academic partner. Consult the For Industry section;
• discuss IP issues with the academic researchers and the institution prior to initiation of the research project, and negotiate a collaborative research agreement that includes the rights and responsibilities of all involved. It is important that this be done before the research gets underway;
• be aware of your rights with respect to protection of background IP, confidentiality of the research results and exploitation of the research results, and ensure these are covered in the research agreement;
  • Be aware that collaborative research projects may be eligible for grants from NSERC and other federal or provincial funding agencies that will share the costs of the academic research project. It is important that you understand the implications and requirements of these programs. In particular, if the research is funded by NSERC as well as your organization, the NSERC IP policy applies to any research agreement developed. Access to the research results under this policy may be open dissemination with no restrictions non-exclusive licensing, exclusive licensing, joint ownership, partial assignment of ownership, or full assignment of ownership.   
• be aware of the academic year / semesters and differences in timing between academic and business partners’ financial years and budget planning;
• recognize that the costs of conducting the research include not just the specific costs of the project (salaries of research personnel [including professors], materials and equipment), but also the costs of buildings and equipment maintenance, administration, etc. (often listed separately as “overhead”);
• be aware that the knowledge and technology applied by researchers in a project often builds on research built over a sustained period;
• understand the potential liabilities when having academic researchers and students conduct research on your premises; and
• be aware that it is your right to be informed by the academic partner, verbally and in writing, of progress on the research. In addition, you must be informed in advance of any publications, conference presentations or theses based on the research that are in preparation, and you have the right to review this information prior to submission;