Invention Disclosure

We encourage researchers to reach out to Industry Engagement (IE). We can provide different options for protecting your intellectual property (IP) that maximize its value and your knowledge, in the community and in society.

Our team includes lawyers, experts in IP assessment, scientists and business people. We are intimately connected into the entrepreneurship and innovation culture of SFU and can provide general guidance on spinning out a company, IP protection strategy, funding opportunities and university policies.

Researchers, do you have an invention? Tell us first! We can help protect the results of your research. Be sure to inform us of any disclosures you have made, including conference abstracts and publications.

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Our Process at SFU

First Step Disclosure IP Potential IP Protection To Market Staying Relevant

First step

The first step in protecting your intellectual property is to set up a meeting with the IE team. At the meeting, your assigned IE Technology Manager will ask you to provide some initial and high level information about your IP without making an official disclosure.

At this stage we are often able to determine if your IP can and should be protected and whether it may be eligible for additional funding opportunities. For those inventions that are able to go forward, we will request a meeting with you to explain the Invention Disclosure Form (IDF), the pros and cons of partnering with SFU and ask you to sign a Letter of Agreement (LOA). The LOA sets the terms of our working relationship. With it in place, you will know what to expect — and what’s expected of you. The IDF is a confidential, internal document that summarizes your innovation.  From the time you contact us to this point usually takes about seven working days.

 

Disclosure

If your IP can and should be protected, we will ask you to make an official disclosure to IE by submitting the Invention Disclosure Form (IDF). This IDF form requires you to share your knowledge on how to mobilize the technology, provides a list of contributors, a description of the invention and its application, material from third parties and your plans for any public disclosures. It helps IE by focusing our attention in the key areas you have identified. Whilst IE will work to mobilize your technology, your expertise becomes key input. Ideally , this is done two to three months before any public disclosures are made such as presentations, articles, or any other form of public disclosure. 

The IDF is not a legal document and providing it to us does not imply you are transferring ownership rights of the technology.

 

IP potential

Once you have submitted your IDF, Industry Engagement will perform a market assessment of  your innovation. During this time, we will examine patent databases for competing patents, analyze the market in order to determine the IP's market potential, commercial potential, societal impact, and alignment with SFU’s Strategic Research Plan. In the event that the IP does not meet our criteria we will work with you to determine other more appropriate directions. This assessment can take up to 60 days.  

It is important to remember that not all IP need be protected by patents. Most software, databases and content are best protected by either a trade secret or a copyright. Many research tools and materials, such as cell lines, can often be maintained as proprietary and licensed without patent protection.


IP protection

Following a successful Assessment, you will be asked to assign your IP to the university through a document called a TARSA (Technology Assignment and Revenue Sharing Agreement). At this point, your assigned Technology Manager will work with you on choosing the appropriate  IP protection and mobilization plan. It may include filing for a provisional patent, establishing copyright or working with you on funding opportunities. Details on SFU's Revenue Sharing Agreement can be found in Section 9 Revenue Sharing in the Intellectual Property Policy.

Provisional patents are valid for 12 months. They are not examined or published by the Patent Office,  though it does establish a date from which priority will be determined. At the end of the 12 month period, the provisional patent application will need to be converted to a patent application. IE uses this 12 month window to validate that your invention has mobilization potential.

Not all provisional patents are converted. The 12 months leading up to the conversion of the provisional patent are crucial for the researcher to work with their technology manager to show that there is a potential market and licensees for the technology. At times we may decline to convert the provisional if it becomes clear that there will be little demand for the invention. If the university chooses not convert the provisional your IP will be assigned back you.

The steps leading from conversion of this provisional application to an issued patent are complex and will extend over many years. SFU will pay the costs incurred during this process with the goal of recovering that investment when the technology is licensed. Unfortunately, there are times that SFU will stop the process after a reasonable period (commonly a year or two). If there is no potential for licensing , or if we cannot obtain reasonable claims from the patent office, in which case the assignment of the IP will be returned to the inventor.

 

To market

As a team, IE and the inventor will look for organizations that have the applicable business acumen, networks, sector knowledge, resources etc. to bring your IP to the market. This may involve partnering with an existing company or forming a startup. In most circumstances, IE will handle the expenses, negotiations of term sheets and collection of revenues from the licensee.

When a license agreement is in place IE is responsible for collecting the revenues, royalties or dividends. The inventor(s) will receive revenues from license fees, royalties and equity — minus any unreimbursed patenting and file expenses. Typically, these funds are collected and distributed as identified within the TARSA that you signed with SFU. The TARSA includes a draft formula based on the contributions listed in the Invention Disclosure(s) relating to the license. All inventors must sign the TARSA.

 

Staying relevant

While a patent may remain in force for 20 years, it still requires management and the payment of fees to remain relevant.  Every 30 months IE will review the patent to determine if the coverage is still reasonable, if there remains market potential, and if the technology is still relevant. At times we may decline to continue the support of the patent, in which case the assignment of the IP will be returned to the inventor.