Topic

Protect Intellectual Property

Who is this for?

University of Toronto (U of T) faculty, staff, and students interested in protecting work produced at the University, prior to selling, licensing, or otherwise commercializing intellectual property.

What do I need before I can begin?

Intellectual Property (IP) comes in many forms: inventions, know-how, data, literary and artistic works, designs, and symbols, names and images used in commerce. IP may be protected in law by patents, copyright, trademarks and/or legal agreements which enable recognition or financial benefit.

Rights to IP, such as patent rights, may be affected by public disclosure including publications, presentations, manuscripts, and/or abstracts. If you are considering a patent application, it is best to inform the Innovations & Partnerships Office (IPO) or submit an Invention Disclosure before publicly disclosing your invention.

Overview

As an academic institution, most Intellectual Property (IP) created at U of T is made publicly available through teaching and research publications. There are instances however, where the University chooses to formally protect IP to support commercialization. Patent protection, for example, can be important in the process of turning ideas and innovations into new products and services, and is often valued by commercialization partners, entrepreneurs, and investors seeking to bring new innovations to the market.

Patents

A patent provides exclusive rights to practice an invention within a particular country or jurisdiction. Generally, it provides the patent owner with the rights to decide how - or whether - the invention can be used by others in the country in which the patent was issued. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document. Protection is granted for a limited period, usually 20 years.

Patent Requirements

There are three key requirements for a patent to be issued in any country.

  1. 'Novelty': the invention must not already be known or previously disclosed to the public
  2. 'Inventiveness': an invention must be a new development or an improvement of an existing technology that would not have been obvious to someone working in the field related to the invention
  3. 'Utility': a patent cannot be obtained for something that does not work or that has no useful function
     

Different countries have different rules about what is patentable subject matter. In Canada, the Patent Act defines an invention as “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”. For further information of patentable subject matter in Canada, visit the Canadian Intellectual Property Office (CIPO) website.

In addition to Canada, many U of T inventions are also patented in the United States and other jurisdictions around the world. For further information of patentable subject matter in the United States, visit the United States Patent and Trademark Office (USPTO).

Since most countries have an absolute novelty requirement, a patent application must be filed prior to the earliest public disclosure of the invention anywhere in the world, including publications, presentations, manuscripts, and/or abstracts. The only exception is a one-year grace period in certain countries, e.g., Canada and the United States.

If you are considering a patent application, it is best to inform the Innovations & Partnerships Office (IPO) or submit an Invention Disclosure before publicly disclosing your Invention.

Types of Patent Applications

There are two types of patent applications: ‘Provisional’ (less formal) and ‘Non-provisional’ (formal).
 

Provisional Patent Applications

A provisional patent application is one way to secure a filing date prior to a public disclosure. A provisional patent application may only be filed in the United States. A provisional patent application must describe the invention in sufficient detail and in an enabling way through a written description, schematics, or figures, but does not require a full set of claims.

The provisional application will not be examined nor result in a granted patent and will expire 12 months after filing. A provisional patent application will never be published unless it is used as the priority filing date for a subsequent non-provisional application.
 

Non-provisional Patent Applications

A non-provisional patent application, which is often called a formal or regular patent application, is an application comprising an enabling description of the invention, schematics, figures, and a set of claims. The formal patent application is published 18 months from the first filing (provisional or non-provisional) and is examined by a patent examiner during patent prosecution. These iterative communications between the patent examiner and applicant ultimately result in the issuance of a patent or abandonment of the application.

For more information on inventions, patents and IP, see the Inventor’s Guide to Tech Transfer at U of T.

IP Ownership & Revenue Sharing

According to U of T’s the University of Toronto’s Inventions Policy, inventions created with the use of University resources (e.g. facilities, equipment, or funding administered by the University) are co-owned between U of T and the inventors at the point of creation. Co-ownership between the University and inventors applies only if a third-party does not have rights to the invention (e.g. IP rights granted through a research agreement).

Because the invention is co-owned, from its creation until the full assignment to either the inventors or the University, inventors have the rights to file for IP protection during that time. If a patent application is filed, IPO should be informed of the filing details in addition to an Invention Disclosure (filing documents & receipt) as soon as possible. As a co-applicant, U of T is considered as a juristic entity (e.g., corporation or association) by the USPTO and the patent application must be filed by a Patent Agent. These patent applications must be filed in the names of the inventors and THE GOVERNING COUNCIL OF THE UNIVERSITY OF TORONTO [Banting Institute, 100 College Street, Suite 413, Toronto, Ontario M5G 1L5, Canada] to reflect this co-ownership status. It is best to submit an Invention Disclosure and determine full ownership of the Invention before patenting.

For more information on IP ownership and revenue sharing at U of T, please visit Learn about the Inventions Policy and Revenue Sharing.

Copyright

According to the World Intellectual Property Office (WIPO),

Copyright is a form of IP protection that defines the exclusive legal right to produce, reproduce, publish or perform original literary, artistic, dramatic or musical works (including computer programs), as well as performances, sound recordings and communication signals. This protection comes into existence automatically, and is available to both published and unpublished works.

Source: WIPO

Learn more about the Copyright Policy and Commercialization.

What You Need to Know

Will I be able to publish the results of my research and still protect the commercial value of my IP?

Yes, but patent rights may be affected by these activities. It is best to submit an Invention Disclosure well before publicly disclosing the invention. There are significant differences between Canada, the United States. and other countries as to how publication affects a future patent. Once publicly disclosed (published or presented in some form), an invention cannot get patent protection outside of Canada or the United States. In Canada or the United States, a patent application can be filed within twelve months of public disclosure. Be sure to inform IPO of any imminent or prior public disclosure if you are considering a patent application.
 

What if I created the invention with someone from another institution or company?

Typically, the invention will be jointly owned. In most cases, the inventor assigns the invention to her or his employer and the two organizations enter into an Inter-Institutional Agreement (IIA) whereby one of the institutions will file the patent.
 

What is the definition of an inventor on a patent and who determines this?

An inventor is a person who conceives and/or contributed to an essential element of the invention claimed in the patent. Inventorship is determined by patent law and may change as patent claims are modified during prosecution of the patent. Inventorship is different from authorship on a manuscript. A patent application is filed based on your Invention Disclosure and the response to the Patent Assessment and Drafting Tool (PADT). The patent practitioner will ask you about your contribution to the conception of the invention to determine the correct inventors. Contact IPO to learn more.

Forms & Downloads

VPRI Role

  • Advise on U of T’s Inventions Policy
  • Assist in finding and evaluating prior art
  • Assess the patentability of inventions assigned to U of T
  • Determine the patent strategies
  • Work with patent experts
  • Manage patent prosecution
  • Suggest which embodiments of the technology have the most commercial potential

VPRI Contact

Staff

Other Resources

University of Toronto's Resources

Patent Offices

Useful Patent Resources & Blogs

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