INVENTOR'S HANDBOOK CALGARY'S - University of Calgary

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RESEARCH CONSIDERATIONS Will I be able to publish the results of my research and still protect the commercial value of my intellectual property? Yes, however, since patent rights are affected by these activities, it is best to contact Innovate Calgary well before communicating or disclosing your invention to people outside the University community. There are significant differences between Canada, the U.S., and other countries as to how publication affects patentability. Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of Canada and the United States. Be sure to inform Innovate Calgary of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/masters thesis, publication, or other public presentation that discusses/describes the invention. May I use material or intellectual property from others in my research? Yes. It is important to carefully document the date and conditions of use so that we can determine if this use may influence the ownership and license rights of your subsequent research results. If you wish to obtain materials from outside collaborators, an incoming Material Transfer Agreement (MTA) should be completed. Contact Innovate Calgary or the Research Services Office for more information on incoming MTAs. For details, visit the Research Services Office website at: www.ucalgary.ca/ research/legal_ip/agreements Will I be able to share materials, research tools or intellectual property with others to further their research? Yes. It is important to document items that are to be shared with others and the conditions of use. If you wish to send materials to an outside collaborator, an outgoing Material Transfer Agreement (MTA) should be completed for this purpose. It also may be necessary to have a Confidentiality Agreement completed to protect your research results or intellectual property. If your technology has been assigned to Innovate Calgary as part of an ongoing commercialization project, we can assist you in preparing outgoing MTAs and Confidentiality Agreements; otherwise the Research Services Office can assist you in completing these agreements. What rights does a research sponsor have to any discoveries associated with my research? The Sponsored Research Agreement specifies the intellectual property (IP) rights of the sponsor. The University often retains ownership of the patent rights and other intellectual property resulting from sponsored research. However, the sponsor may have rights to obtain a license to the defined and expected outcomes of the research, or may have been granted other rights. Sponsored research agreements often allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as the result of the research. The sponsor generally will not have contractual rights to discoveries that are clearly outside the scope INVENTORS HANDBOOK 12
of the research. It is important to define the scope of work within a research agreement. For technologies assigned to Innovate Calgary the Licensing team can assist in formalizing these agreements. Sponsored research projects not assigned to Innovate Calgary are handled by the Research Services Office. If you have questions about sponsored research, please contact the Research Services Office at: www.ucalgary.ca/research/legal_ip/. For Health Legal visit: www.medicine.ucalgary.ca/research/contracts What about Consulting? Researchers entering into consulting agreements are deemed to be acting outside of the scope of their employment. Therefore consulting agreements are not negotiated by the University of Calgary nor formally reviewed by Innovate Calgary. Researchers who enter into consulting agreements should familiarize themselves with the policies of the University of Calgary relevant to consulting activities. The researcher is expected to comply with the Outside Professional Activity (OPA) policy and the consulting activity is to be performed off campus. Innovate Calgary is available to provide informal advice on how your consulting agreement relates to your University Intellectual Property. University of Calgary Conflict of Interest Policy www.ucalgary.ca/policies/files/policies/Conflict%20 of%20Interest.pdf OPA Policy www.ucalgary.ca/policies/files/policies/Outside%20 Professional%20Activity.pdf 13 RESEARCH CONSIDERATIONS
Page 1 and 2: UNIVERSITY OF CALGARY’S INVENTOR
Page 3 and 4: VISION Calgary will be one of the l
Page 5 and 6: TABLE OF CONTENTS Technology Transf
Page 7 and 8: TECHNOLOGY TRANSFER OVERVIEW Univer
Page 9 and 10: The assessment includes determinati
Page 11: The Commercialization Process Resea
Page 15 and 16: How do I submit an Invention Disclo
Page 17 and 18: Assessment of an invention disclosu
Page 19 and 20: converted to a regular patent appli
Page 21 and 22: Will Innovate Calgary initiate or c
Page 23 and 24: LICENSES AND OTHER AGREEMENTS What
Page 25 and 26: NAVIGATING CONFLICT OF INTEREST How
Page 27 and 28: CONSIDERATIONS FOR A STARTUP COMPAN
Page 29 and 30: How long does it take to launch a s
Page 31 and 32: CONTACTS: Innovate Calgary Website

INVENTOR'S HANDBOOK CALGARY'S - University of Calgary

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