Overview
Intellectual Property (IP) refers to creations of the mind, including inventions, know-how, data, literary and artistic works, designs, symbols, names, and images. IP can be protected in law through patents, copyright, trademarks, and/or trade secrets which enable people to earn recognition and financial benefit from what they create. Patents, for example, are valued by industry, entrepreneurs, and investors seeking to protect their novel products, compositions, or processes, and prevent others from making, using, or selling their invention. They can be important in the process of turning ideas and innovations into new products and services, and have value in the marketplace.
A patent provides rights to exclude others from making, using, or selling the invention in the country where the patent is granted. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document. Patent protection is granted for a limited period, usually 20 years. Patent rights can be granted by the owner to others, such as by way of a license.
Discover more of U of T’s patents on Explore IP.
Generally, there are four key requirements for a patent to be issued.
- ‘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
- ‘Eligible Subject Matter’: patentable subject matter can be any product, process/ method (including software when embodied on a device), machine, composition of matter, or any improvement therein.
Rights to Intellectual Property (IP), such as patent rights, 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.
According to U of T’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. Ownership may also be encumbered by any third-party rights to the invention (e.g., by way of a research agreement).
Under U of T’s flexible “Inventor’s Choice” invention ownership policy, inventors may choose to assume full ownership and responsibility for patenting and commercialization (Inventor-owned) or can offer to assign the Invention to U of T (University-owned).
It is best to submit an Invention Disclosure and engage with the Innovations & Partnerships Office (IPO) to determine full ownership (whether Inventor-owned or University-owned) of the invention before patenting. In the event, however, that a patent application is filed while the invention remains co-owned by U of T and the inventors, there are some important considerations to keep in mind.
- U of T is a co-applicant, and is considered as a juristic entity (e.g., corporation or association) by the United States Patent and Trademark Office (USPTO) so a United States (US) patent application must be filed by a registered US patent agent
- Co-owned patent applications must be filed in the names of the inventors and THE GOVERNING COUNCIL OF THE UNIVERSITY OF TORONTO to reflect the co-ownership status
- If a patent application is filed, IPO should be informed of the filing details through an Invention Disclosure as soon as possible. If the proper steps are not taken, the validity of the future patent could be put in jeopardy.
For more information on IP ownership, please visit
Copyright is a form of IP protection that protects original works, such as those developed during the course of research. 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.” Copyright provides the right to prevent others from reproducing the work or copying any substantial portion of it.
Learn more about Copyright and U of T’s Copyright Policy.
Another valuable form of IP protection is trademarks, which can be useful for startups founded by U of T researchers in protecting their brand. A trademark can be letters, words, sounds or designs (or a combination thereof) that distinguish a company’s goods or services from those of others in the marketplace.
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 in certain countries. 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 external inventor assigns the invention to their 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. 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.
The U of T IP Education Program is an accessible, free, online training program designed to equip students, faculty, and staff with a broad foundation in intellectual property. If you are an entrepreneur, researcher or student, register now to learn about your IP rights, why they matter, and how IP strategies can be applied in business. Get answers to questions such as the following.
- Can a patent be granted for an improvement of an existing patented invention?
- Can software algorithms be patented?
- Does copyright need to be registered in Canada?
- What type of IP protection is appropriate for my startup company’s logo?
- Develop and administer the IP Education Program
- 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 intellectual property and patent protection strategies
- Work with patent experts
- Manage intellectual property portfolio and patent prosecution
- Suggest which embodiments of the technology have the most commercial potential
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