UBC researchers with a research discovery or output that they wish to commercialize are required to submit an invention disclosure to the UILO. As we look to support a broader range of knowledge mobilization channels and activities, we also welcome enquiries from UBC researchers who are looking to disseminate research outputs in non-commercial ways.
For those research discoveries that may have a commercial application however, or require protection of the intellectual property, the following guidelines continue to apply:
Subject to the terms of a sponsored research agreement, things created in a university setting initially belong to the individuals who create them. If the inventors desire or are required by the terms of their research agreement to commercialize the invention, ownership rights shift to UBC. At this point, faculty, staff and students are required to assign to the University their rights to inventions, improvements and modifications arising out of research conducted using UBC facilities or developed using University-administered funds. They are required to complete an Invention Disclosure and Assignment Form available from the UILO to begin the technology transfer process.
When to disclose to the UILO
The UILO encourages an early disclosure of new inventions in order to prevent inadvertent public disclosures of your invention which could hinder or even prevent any patenting protection for your IP. If your IP is discussed outside of the University, at conferences, through publications, or posted online in any format, then this constitutes a public disclosure which can severely restrict the level of patent protection that can be obtained. The UILO is experienced in filing patent application at the appropriate time to maximize the coverage period, so early disclosures are encouraged. If your disclosure is made before you have enough information to file a patent application on, then the UILO will advise on what else is required to proceed, and will also enter into an ongoing dialogue to ensure that sufficient time is provided to protect your IP before any planned public disclosure.
After you disclose to the UILO
Once the UILO receives your signed invention disclosure form, the disclosure enters into our assessment and advancement process. Under normal circumstances, the UILO will report back to you on the results of the assessment within 90 days.
These guidelines are intended to assist researchers understand who is entitled to be named as an inventor or originator. As they provide a general overview rather than comprehensive advice, you should contact the UBC University-Industry Liaison Office (UILO) for further information on specific situations. If your project concerns computer software, you should also refer to the Computer Software Inventorship Guidelines.
What is an invention?
An invention is "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter." An invention or discovery includes data bases, audio-visual and computer material or equivalent circuitry, biotechnology and genetic engineering products and all other products of research that may be licensable: University Policy #88 - Inventions and Discoveries.
The act of inventing involves two stages: (i) conception and (ii) reduction to practice. An invention begins with an idea -- "conception" of the thing or subject matter that is ultimately created and the complete means of creating it. Then the idea is reduced into practice by testing and ultimately making or translating the idea into a physical and useful form. The conception (idea) stage is complete when there is definite and permanent idea of an operative invention that could be described to a person of ordinary skill in the art who could then construct or use the invention without extensive further research or experimentation.
Who is an inventor?
For the purpose of determining who is an inventor, only a person's role in the conception (idea) stage is considered. Each person who makes an original and substantive contribution to conceiving the thing ultimately invented or one of its essential elements is legally entitled to be named as an inventor. An inventor is one who formulates and describes the means of making the thing ultimately invented.
A person will not be considered an inventor, if he or she merely:
- Suggested or thought about an idea or end result or posed the question to be solved, but did not also come up with the actual way of implementing the idea, achieving the end result or solving the problem;
- Contributed an obvious, rather than an original and substantive, element of the invention;
- Was involved in testing or reducing someone else's idea into practice;
- Suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual invention;
- Followed instructions of those who conceived the end result or solution;
- Is the department head, supervisor or head of the laboratory where the invention was developed, but did not contribute directly and substantially to the inventive process; or
- Provided funding for the research, equipment or laboratory where the invention was created.
Inventorship is also different than authorship. A person may be an author or co-author of a publication describing an invention, but will not be considered a co-inventor unless he or she made an independent conceptual contribution to the invention.
Who qualifies as a joint or co-inventor?
An invention may have more than one inventor. To qualify as a joint or co-inventor, you must have made an independent, conceptual contribution to an invention or one of its essential elements. The contribution must be substantial and one that makes a difference in the essence, use, application or production of the invention.
Joint or co-inventorship requires some form of communication between the inventors. It is not necessary, however, that they physically work together or for the ideas to have occurred to the co-inventors at the same time. Rather the invention is the result of collaboration, each co-inventor contributing in an original substantive way to conceiving that which is ultimately invented.
Can a graduate student be an inventor or co-inventor?
The role a person plays in the conceptual process is determinative of inventorship, rather than one's status at the University. Consequently any member of a research group - whether graduate student, post-doctorate fellow, technician or full professor - who makes an original, substantive contribution to the conception of the invention or one of its essential elements is entitled to credit as an inventor or co-inventor. Team members who merely assist in finalizing the invention, for instance by gathering essential data or building the end product, are not entitled to credit as inventors unless they also made an original, substantive conceptual contribution.
Have the joint or co-inventors contributed equally?
Exclusive rights to use, make, construct and sell an invention within a country are not automatic but are protected by patent (as well as by other means). Within a patent application, all co-inventors must be identified without distinguishing whether one person contributed more than another. The contributions of the co-inventors, however, may not have not been equal. It is up to the co-inventors to enter into an agreement amongst themselves regarding each inventors relative contribution and future share of commercialization proceeds. UBC will assist in resolving disputes and will remit revenue earned from commercialization based on each person's agreed upon share.