Intellectual Property Guidelines for Graduate Students & Supervisors

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Revised 2007

Preface

The intent of this booklet, prepared by the School of Graduate Studies, is to address issues associated with intellectual property that arise in the most varied of circumstances, across all settings at the University of Toronto in which graduate education occurs. It is directed toward graduate students and graduate faculty members working with them, but we anticipate that it may also be of interest to a wider readership.

A primary goal of advanced education is the creation of new knowledge. When that occurs, questions can arise regarding its ownership. When a graduate student who is working with a supervisor and supervisory committee makes an important discovery, who should benefit from the results? Who is entitled to claim authorship of creative works that arise in the context of graduate education? Much of our research and scholarship is necessarily and quite appropriately collaborative. Experience has taught us that early discussion of matters relating to intellectual property can help the participants establish comfortable collaborations and minimize conflict.

These guidelines provide some fundamental definitions, summarize current University of Toronto policy and procedures, and provide links to sources of further, more detailed, information. The guidelines are not intended to replace independent legal advice, nor are they intended to promote restrictions on the openness that normally characterizes intellectual discourse within the University.

The first version of this booklet was distributed by SGS Dean Michael Marrus in 1999. Its creation w as guided by Harvey Anderson (SGS) and Peter Munsche (Office of Research). This revised, second version is once again a collaboration of the School of Graduate Studies and the Office of the Vice-President Research. I thank in particular Ming Yao Liu, Jason Bechtel, Steve Moate, Berry Smith, and Heather Kelly for their energy and care.

The authors and I ho​​pe that these guidelines provide all readers with helpful information and suggestions for approaches to a topic that can seem daunting, by virtue of its complexity. We believe that incorporation of this information into our graduate programs will help our community function more collegially, and will help to prepare our graduates for the societal roles they as pire to undertake.

Susan Pfeiffer, Dean
October, 2007

Introduction

Intellectual property issues should be understood within the framework of research policies of the University of Toronto. It is the responsibility of every student and supervisor to be aware of these policies and to be sure that they are engaged in research in a mann er that is consistent with them.

This guidance document is intended to introduce students and supervisors to intellectual property issues and relevant University policies, and to contribute to the University's commitment to academic freedom and the creation and dissemination of knowledge.

For most graduate students, the relationship between the student and supervisor is a productive collaborative activity. Every effort is made to provide the student with the appropriate learning environment and skills required to succeed as a n independent scholar in future positions. Sometimes however, misunderstandings arise about the rights or obligations that students have with the University, the supervisor and other colleagues, a granting agency providing research support, or others with an interest in the research.

At the outset, it must be recognized that considerable variation in pra ctice exists among graduate programs within the University. For example, in many humanities and social science departments, a student may pursue his or her thesis work largely indep endently. In contrast, in many physical and life science departments, graduate students often work as part of a research team in a laboratory, which also includes post-doctoral fellows, research assistants and associates, and/or research technicians.

A further complexity is that graduate students may by some definitions be considered employees of the Uni versity and/or of a hospital or other research institute which includes their work or research area. Accordingly, this document highlights the similarities—and distinctions—between the applications of intellectual property policies to individuals in various categories.

Using a question and answer format, this document provides general guidelines for the conduct of such research. Graduate students at the University of Toronto should familiarize themselves at the start of their research program and during their graduate education with these general guidelines and with specific University policies related to inventions and other intellectual property (see Appendix 1). We encourage all students and supervisors at the start of the student's program to complete the Intellectual Property Awareness form.

1. What is intellectual property?

Intellectual property is the product of intellectual or creative activity that can be protected under the law to some extent. There are various forms of legal protection, but the two which are most likely to be relevant in the University environment are copyright and patents.

Copyright protects original liter ary, musical, dramatic, or artistic works in a variety of forms, including written materials and computer software. Copyright does not protect ideas, but rather the expression of su ch ideas. It prevents anyone from copying, publishing, translating, or broadcasting a work without the copyright owner's permission. In Canada, the usual term of copyright consists of the author's lifetime, the entire calendar year of his or her death, and an additional 50 years. In a number of other countries copyright has been extended to life plus 70 years. Although copyright comes into existence automatically when the work is created, authors may signal their claim by marking the work (© [author's name], [year of publication]) and, in addition may register the copyright with the Copyright Office. The Canadian Copyright Act provides that the author of a work is the first owner of copyright. However, it provides that where a work is created by an employee in the course of his or her employment, in the absence of an agreement to the contrary, the employer is the first owner of the copyright.

Patents protect inventions—that is, creations or discoveries, which are new, not obvious and useful. It applies to many things: devices, chemical compounds, new uses and, in some countries, new life forms, such as transgenic animals. What makes an invention "new" is that it has not been disclosed publicly prior to the filing of a patent application. If it has been disclosed in an article, a seminar or even in a conversation not covered by a confidentiality agreement before that filing, it will not qualify for a patent in most countries. A patent prevents anyone else from using the invention without the patent owner's permission for approximately 20 years. After the patent expires, anyone is a ble to use the invention without a requirement to obtain the former patent owner's permission.

Like many legal instruments, the effectiveness of copyright and patent rights of ten depends on the willingness of owners to enforce their rights. This can be expensive. Patent litigation, for example, can entail millions of dollars in legal costs in complex cas es.

2. What are the University of Toronto's policies regarding intellectual property?

Two University policies govern the rights in intellectual property created by mem bers of the University community: the Copyright Policy and the Inventions Policy. Both policies are administered by the Office of the Vice-President, Research.

The Copyright Policy applies to all works in which copyright subsists, except for computer software not designed for instructional purposes. Under the Copyright Policy, a graduate student wou ld normally retain copyright in works that he or she creates, with two exceptions. The University holds copyright in works created in the course of the student's employment by the University or which are otherwise commissioned by the University under a written agreement with the student.

Where the student retains copyright, the University may be entitled to a share of revenue from the student's commercialization of the work if the University has made extraordinary resources available to support the creation of the work, such as a d irect investment of funding or the purchase of special equipment. A student wishing to commercialize such a work should disclose it to the Office of the Vice-President, Research using forms available on the Research & Innovation website.

The Inventions Policy applies to all inventions, whether or not patentable, and includes a ll computer software not designed for instructional purposes, research data or research tools, and all proprietary information associated with any of these items. Under the Inventions Policy, a graduate student would normally own an invention that he or she invents jointly with the University at first instance, with three exceptions. The University owns invent ions that are created under the direction of a faculty or staff member specifically with the object of making the invention, that are created in the course of employment by an administrative or support staff member, or that are otherwise commissioned by the University under a written agreement with the inventor.

If an inventor owns an invention jointly with the University, the inventor normally has a choice: the inventor may offer the invention to the University for commercialization or may take personal ownership of the invention and undertake its commercialization and protection at his or her own expense. Note, however, that the terms of research funding that supported the invention's development may al so apply; see Question 4 below.

The Innovations Group, a unit of the Office of the Vice-President, Research, is a group of professionals brought together to commercialize inno vations developed by University researchers. An inventor may offer to assign his or her rights to the University or otherwise appoint the University as his or her representative for commercialization of the invention. The Innovations Group will assess the invention for its commercial potential and, if the inventor's offer is accepted, the University will take on the obligation to protect and commercialize the invention, in return for the commitment to provide 60% of any net revenue from commercialization to the inventor.

If the inv entor wishes to undertake commercialization and protection of the invention, the inventor may take assignment of the University's interest in the invention in return for certain obligations, including the obligation to provide 25% of any net revenue the inventor receives from commercialization of the invention to the University.

The law grants intellectu al property rights to all creators/inventors, irrespective of their status as graduate or undergraduate students. Students have intellectual property rights and rights to protection under the copyright and patent regimes, provided they satisfy the requirements of the law.

In addition, all students, graduate or undergraduate, are governed by specific University policies.

3. I am employed as a research assistant, teaching assistant, or other type of employee of the University. Who owns intellectual property that I create?

Under applicable legislation, intellectual property created by an employee in the course of his or her employment is deemed to belong to the employer unless there is an agreement providing otherwise. The University's policies modify the application of this generally applicable principle as noted above. In most cases, the University would not solely own a copyright work or invention created by a graduate student. It is therefore important to characterize the terms of engagement of the particular student properly.

To assess your i ntellectual property rights, it is necessary to identify the nature of the relationship within which you created the intellectual property. For instance, if it was created in your capacity as a student, including as part of activities funded by a student award, it is probably yours. If it resulted from activities performed as part of employment, payment for w hich was accompanied by a T4 tax slip, it is probably the University's. If you are in doubt, please consult your supervisor.

4. My research is supported by external funding, such as a scholarship, fellowship, or my supervisor's research funding. What is the effect on the intellectual property that I create?

The relationship between funding and intellectual property rights depends on (a) who the funding body is, and (b) what the terms and conditions of funding are.

Not all funding bodies are the same. Some public fundi ng bodies such as the federal granting councils—Natural Sciences and Engineering Research Council of Canada (NSERC), Canadian Institutes of Health Research (CIHR), and Social Sciences and Humanities Research Council of Canada (SSHRC)—attach no intellectual property claims to the research they fund. The disposition of any resulting intellectual property rig hts would be in accordance with the University's policies, subject to any specific sponsor policies.

Other organizations, notably companies, do attach intellectual property claims to their support of University research or of fellowships or scholarships for students. Still other organizations, such as some charitable associations or foundations, or provi ncial Centres of Excellence (e.g., the Heart and Stroke Foundation or Materials and Manufacturing Ontario), may claim either licensing rights or a share of royalties. To ascertain which of these conditions apply, you should be aware of which organization is funding the research you do and what ownership rights the organization has on the results of your work.

Contracts and grants from the private sector are increasingly common and are encouraged by CIHR and NSERC. If materials have been made available for your study by an external source, a material transfer agreement may also be applicable. Funding agreements may have a number of provisions with respect to intellectual property rights, confidential informati on and publication. Where the terms of funding include a grant of rights in resulting intellectual property, all project participants will normally be asked to sign an agreement in which they indicate that they have been made aware of the funding terms and agree to abide by them. At the outset of the project, your supervisor should disclose these restrictions to you and the advisory committee and determine if the work is suitable for thesis research. As a student, you should be clear at the outset of your graduate research about the conditions of all applicable agreements. See the Intellectual Property Awareness Form for a framework for that discussion.

5. What right does my supervisor have to any discovery or invention I make?

It all depends on the individual circumstances and the applicable governing law, policy, or convention. For example, if it is an invention, the determination of who is an inventor or co-inventor will depend on patent law. University policies will determine who owns the invention. If a publication is involved, copyright law and custom will decide who is an author and how the authorship will be shared and portrayed. Moreover, if a research sponsor has rights to own or to license the results of the research, this may determine what free dom you and the other inventors or authors have regarding what will happen to the results of the research.

In brief, your supervisor and other parties may have a large or small claim on the intellectual property rights relating to work you do as a student. This is something you should be aware of and discuss with your supervisor prior to beginning work that could lead to creations or inventions that would be accorded intellectual property rights. Ordinarily, a student will have no claim to his or her supervisor's or instructor's work unless the student is a joint author or joint inventor.

Likewise, a supervisor would not have a claim if he/she is not a co-author/co-inventor. If your work was done as part of an ongoing research project, it should be expected that your results can be used, with appropriate attribution, in furthering the research activities of the supervisor and othe rs working in the same laboratory or research group (e.g., in publications, presentations, grant applications, and final reports).

It is important to clarify rights to intellectual property prior to the submission of papers for publication or disclosure of research findings at scientific meetings or in any way which places any creation or invention in the public domain.

If you are a graduate student in the professional Master's programs, you probably do not have a "supervisor". If your research projects result in publishable data, patentable innovation or other intellectual properties, you should contact your graduate chair and/or graduate coordinator to determine the procedure and ownership of intellectual properties.

6. Who owns the data produced in my research project?

Raw data are not normally considered to be intellectual property in law. They are neither an invention (i.e., patentable) nor an expression of an idea (i.e., a copyright work). Nevertheless they can be important and potentially valuable outcomes of academic research.

However, research data are considered to be an invention under the University's Inventions Policy. Thus, in most cases, research data are jointly owned by the researcher and the University, which means that both have the right to use the data. The research project's funding source may also be relevant. A project sponsor may have rights to the data under a sponsored research agreement, or may require that the data be made broadly available to the research community through public data archiving or other methods.

Whether or not you have rights in the data, the equipment on which you data and results are recorded—notebooks, tapes, computer hard drives and other memory media—may be the property of the University. Personally identifiable data collected from human subjects are also governed by human subject protocols and privacy legislation, which may place restrictions on your use of the data, including its removal from University premises. Students should always consult with their supervisors before removing data, or equipment or media on which the data are stored from University premises.

Data from collaborative research projects are an important resource not just for you, but for the entire research team. Your research team ma y have a policy on sharing of data within the lab. Where the supervisor or someone else jointly owns data or results that have been published, you may incorporate them in your thesis with permission of the other co-owners and you will own copyright in your thesis as a whole. The grant of permission to use data in your thesis does not give you the right to use the data for other purposes without permission. In all cases, one must provide appropriate attribution of the source of the data.

Unless it is clear that your contribution was that of an employee following explicit directions, you are entitled to have your contribution recognized when you generate or compile data or results, even if someone else is the a uthor of a publication and owns or jointly owns the copyright in the report. Whenever you are a co-author of a published work, you also have a responsibility to understand the work in its entirety and to object to any mischaracterizations or misuse of the data.

By submitting your thesis or dissertation for academic credit, you represent that overall it is your own original work. Anyone making use of the ideas or contents of your thesis should reference it as a published document. Similarly, to the extent that your thesis utilizes publications arising from your research team or quotes major sections of publications, it may be necessary to obtain permission from the copyright holder. This may be the author or it may be the publisher of an academic journal. In all such situations, it is best to seek guidance on these matters from your supervisor prior to publication, and to conform to acce pted practices in your department with respect to quotation of material from external sources.

7. When is someone a joint inventor or joint author?

You may be a " joint inventor" if you make an original and substantive contribution to an invention. In this case, you should be named as a joint inventor in any patent application. However, if you were employed to do the work that constituted your contribution to the invention, you may be required to assign any patent rights in the application to your employer.

C onventions about what criteria define a joint author vary among disciplines. The narrowest definition comes from copyright law and applies to collaborations in literary and artistic works in some of the humanities. There, a "joint author" is technically someone who has collaborated on a work in which the contributions of the various authors are not d istinct from one another. In this model, only contributors to the form or expression of the work qualify; those supplying ideas normally do not. If each person's contribution is dis tinct (e.g., contributors of entries to an encyclopedia), the work is a "collective work" and each author has copyright in his or her individual contribution.

In the physical and life sciences, collaboration and teamwork are common. Indeed, a student's research may be guided by a team or committee. Contributors to the original ideas in a project are typically given the right of joint authorship of publications that report on the results of the research. As a guideline, co-authorship should be recognized only where the in dividuals have participated in a significant way in at least two of the following aspects of the research:

  • conception of idea and design of experiment,

  • actual execution of experiment or hands-on lab work,

  • analysis and interpretation of data, and/or

  • actual writing of the manuscript.

Disagreements about rights to senior or first authorship can be difficult to resolve. In the humanities and social sciences the student will probably be the only author of the published work that reports on his or her research. In the physical and life sciences, students are frequently given first authorship in publications arising from the ir thesis research. However, students should be aware that some professors may claim the right of first authorship for themselves. This may be the case where first authorship is seen as a requisite at the professor's particular career stage, or simply from the personal policy/preference of the professor. If the student anticipates concerns on this matter, he or she should inquire in advance of choosing the professor as a supervisor. Where controversy does arise about who is entitled to be credited as first author, as co-author, and/or in what order the author credits should appear, the supervisor will usually decide the issue. See Question 9, below, with respect to dispute resolution mechanisms.

The fact that a co-worker is not named as an investigator in a grant or contract under which the work was performed should not prevent him or her from being given credit as a co-author. However, a requisite of co-authorship is work that involves an original contribution as understood by that discipline. The right to co-authorship may be lost if a co-worker leaves the proje ct or does not contribute substantially to the work. Although acknowledgement may be appropriate in such circumstances, co-authorship rights cannot be assumed.

Normally, the supervisor, in consultation with his or her co-authors, will make the decision as to when or whether a co-authored manuscript should be submitted for publication and to what journal. A student considering publication of his or her own paper also has a responsibility to consider the intellectual property and co-authorship rights of others who may have been invol ved in the research.

8. If I am a graduate student working in the teaching hospital or institutes affiliated with University of Toronto, which institution's intellectual prop erty policies should I follow?

If you are working in a fully affiliated teaching hospital, you should disclose your invention to either the University or the hospital. If the disclosure indicates that you made use of another institution's facilities or funds, the institution receiving your disclosure will send a copy of it, in confidence, to the other institution. Under the University's affiliation agreements with the teaching hospitals, the policy of the institution on whose premises the invention was made governs. If the inventi on is made on the premises of both institutions or agreement cannot be reached on whose policy applies, the policy of the institution that has provided the greater proportionate sha re of the salaries of the inventors governs.

The hospital and the University (or the University inventors, if they have taken assignment from the University) may own the inven tion jointly in some circumstances. In those cases, a joint owners' agreement is negotiated and the owner whose inventors have made the predominant inventive contribution normally takes the lead on commercialization.

9. If a dispute arises with respect to intellectual property and/or co- authorship rights with my supervisor, where do I go for help?

If a dispute or concern arises with respect to intellectual property and/or co-authorship rights, you and your supervisor should first try to resolve any differences amicably. The underlying causes of disputes can be complex but resolution can usually be obtained through discussion or negotiation through your department: consult your graduate coordinato r or graduate chair. If problems still persist, you can seek help from the appropriate associate dean or vice-dean of your Faculty or your Faculty graduate affairs office. Your program or Faculty may also consult with the Office of the Dean of the School of Graduate Studies, and the Office of the Vice-President, Research.

The University has policies that deal at length with specific aspects of intellectual property and the conduct of research. These policies can be obtained through the University of Toronto's website or from your graduate department. Please see Appendix 1 for a listing of the policies to which you may refer for specific information.

Appendix 1

University of Toronto policies relevant to intellectual properties.

For current policies, guidelines, forms, and useful website links, please visit the website of the Office of the Vice-President, Research at the University of Toronto and The Innovations Group.

Specific Policies

Copyright Policy

Inventions Policy

Publication Policy

Useful Links

Canadian University Intellectual Property Group, A Guide to Protecting Intellectual Property

Canadian Intellectual Property Office