Software is often created by a team or an organized research group in several stages over a long period of time and then maintained and modified in subsequent versions.

Determining who are the "inventors" or "originators" of software can therefore be a complex question. Yet it is important to correctly name the inventors / originators and agree on their relative contributions to the inventive process, if the software is to be commercialized and the intellectual property rights protected.*

These Guidelines are intended to provide a general overview, rather than comprehensive advice, on who are the inventors / originators of computer software developed in a University setting. You should contact the University Industry Liaison Office (UILO) if you require further information on a specific situation. For additional information on the general subject of inventorship, you should refer to the Inventorship Guidelines.

Who are the inventors / originators of computer software?

Software creation is sometimes described as a waterfall process, typically moving through the following stages:

(i) conceiving the concept,

(ii) defining the general requirements,

(iii) designing and describing the system / algorithm (structure, sequence and organization),

(iv) building or constructing the system,

(v) developing the testing scenarios,

(vi) testing, and

(vii) implementing and modifying the system.

Some or all of these stages may be repeated when subsequent versions of the software are developed.

In determining who are the inventors / originators of software, one must examine which individuals made an original, substantive contribution to its creation or design. Those with key roles in the stages (i) - (iii) certainly meet this test. The inventive contribution of those involved in stages (iv) - (vii) is less certain; consequently those involved solely in these latter stages are generally not entitled to credit as inventors/originators.

Persons providing the test cases and overall organization for the software may also qualify, if their contributions added in an original and substantive way to the ultimate design. Likewise, an individual involved in developing subsequent versions of the software may be entitled to rights as an inventor / originator, if he or she made an original, substantive contribution to the new version's design.

A person will not be considered an inventor / originator of the software, if he or she merely:

• Contributed an obvious, rather than an original and substantive, element of the software;
• Was involved in testing the software or translating it into standard computer language;
• Suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual software;
• Followed instructions of those who conceived the software design, e.g. constructed or modified the software using the algorithm, organizational structure and test scenarios provided by others;
• Wrote the technical documentation for the software;
• Is the department head, supervisor or head of the laboratory where the software was developed, but did not make a direct, original, substantive contribution to its creation or design; or
• Provided funding for the research, equipment or laboratory where the software was developed.

How does a software development team determine the contribution of each inventor / originator?

Not every inventor / originator of the software may have contributed equally. Certain members of a software development team may have been working on the project for years, while others may have been involved for only a short period. A graduate student who works on the project for only one term but nevertheless makes a small original contribution to ultimate design of a version of the software, is entitled to credit as a partial inventor / originator for that period. Other individuals may have played key roles in designing different versions of the system but moved their focus to other projects. One faculty member may have developed the initial concept and organizational structure, and continues to oversee is design. All are entitled to partial credit as inventors / originators, although some may be entitled to receive more credit and compensation than others. It is a person's role in the inventive design process, not his or her status within the University, research team or facility, that entitles that person to receive credit as an inventor / originator and share of future commercialization proceeds.

It is up to the research team to agree amongst itself on relative individual contributions. It is very important, however, that only those who have made a substantial contribution to inventive process (i.e. stages (i) - (iii) above) are included as inventors / originators. Incorrectly crediting persons as inventors / originators or failing to correctly include someone as an inventor / originator can have serious ramifications in protecting and licensing the software. The inventors / originators should thus discuss how relative contributions shall be valued as early as possible in the software development process. It may be helpful to develop a formula for valuing individual contributions based solely on each person's substantive creative contribution to each version of the software.

The University will assist to resolve disputes that may arise. To avoid misunderstandings, graduate and other students should discuss these issues with the supervising professor and research team to understand their role before beginning work on a project.

* The term "inventor / originator" is used throughout these Guidelines, since computer material is considered an invention under University Policy # 88 - Patents and Licensing, although the intellectual property in computer software is generally protected by other means than by patent in Canada.