Who is this for?
Anyone at the University of Toronto (U of T) 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 may be affected by public disclosure such as 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.
As an academic institution, most IP created at U of T is made publicly available through teaching and research publications. There are instances however, where the University chooses to protect IP in order to support commercialization. For instance, patent protection can be important in the process of turning ideas and innovations into new products and services and is often required by commercialization partners, entrepreneurs and investors seeking to bring new innovations to the market.
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 This protection comes into existence automatically, and is available to both published and unpublished works.
Learn more about the Copyright Policy and Commercialization.
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.
There are three key requirements for a patent to be issued in any country.
- 'Novelty': the invention must not already be known or previously disclosed to the public
- '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
- '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 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 regarding the validity of a patent, a patent application must be filed prior to the earliest public disclosure of the invention anywhere in the world, subject to a one-year grace period in certain countries, e.g., Canada and the United States.
There are two types of patent applications: ‘Provisional’ (less formal) and ‘Non-provisional’ (formal) patent applications.
Provisional Patent Applications
A provisional patent application may be one way to secure a filing date prior to a public disclosure. A provisional patent application may only be filed in the United States. While it does not need to include a full set of claims, a provisional patent application must describe the invention in sufficient detail and in an enabling way via including a written description, schematics or figures.
The provisional application will not be examined nor result in a granted patent and will expire after 12 months after its filing. A provisional patent application will never be published unless it is used as the effective filing date for a subsequently filing application under the Paris Convention.
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 or figure and a set of claims. The formal patent application will be become published 18 months from the first filing (provisional or non-provisional). It will be examined by a patent examiner and will result in a series of iterative communications between the patent examiner and the applicant up to the issuance of a patent or the abandonment of the patent application (patent prosecution).
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. Assuming there are no third-party rights to the invention (i.e. IP rights granted through a research agreement) and university and the inventors.
Because the invention is co-owned, from its creation until the full assignment to either the inventors or the university, the inventors have the rights to file for IP protection during that time period. 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. If a patent application is filed, the IPO should be informed of the filing details in addition to an invention disclosure (filing documents & receipt).
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.
For more information on IP ownership and revenue sharing at U of T, please visit Inventions Policy and Revenue Sharing.
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 your 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. If a patent application is filed based on your invention disclosure, the patent practitioner will ask you about your contribution to the conception of the invention to determine the correct inventors.
- 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