What should an institutional policy touch on?

How to decide these issues? How to implement?

IP that is included Who is covered Ownership of IP Disclosures Dispute resolution Protection of certain

communities/Conflicts Responsibility for Management Splitting the money

Traditional division between Copyrights and Patents

Ignoring of Trade-marks Good arguments to be made now that

all IP should be brought into a policy Who decides when IP will be

commercialized? (Researcher, funder, administration?)

Researchers Students Staff members How about visitors? Members of the local community

allowed to use facilities? How to reconcile issues over

collaborating partners?

Clear statement that IP is owned by X [Inventors; Funding Organization; Institution?]› Choice should be based on: who is best

capable of doing the work? Obligations to sign patent documents

› Need for institutional and individual signatures Consider ‘relief valve’ that lets

researchers get ownership back

Open source? Academic publications Open innovation

Most important special case› transfer of ownership only when paid “full

economic costs”› Meaning of FEC

Publication limits Other issues related to working with

industry

Can’t manage what you don’t know Initial information gathering Gather information relevant

to initial valuation Need to balance information

required and complexity to complete

Initiates management Can be used to pass information to:

› Internal stakeholders (academic management)

› External stakeholders When is something truly a disclosure?

Who is an Inventor?› Patent attorneys can answer

to a point Useful to have some type of

internal committee to arbitrate disputes

Can also help with revenue splits

Inherent conflicts between supervisors and students

How to protect students? Conflict between granting agency and

host institutions Use of an intermediate

authority Conflicts between

inventors and institutions

They say: “It’s not the money, it’s the principle”

They mean: “It’s the money!” How to determine? Institutional portion generally at least

50% after ‘costs’ What do costs mean? Include overhead, time etc? or just

patents and outside personnel?

Does TT get a portion of revenues automatically?

What other functions will they be given

How to fund over ‘dry spells’?

Communication plan Also needs to see almost immediate

services being available Practices (next section) are a critical

piece of the puzzle

Marcel D. Mongeon+1 (905) 390 1818

marcel@mongeonconsulting.com