Frequently asked questions

Who should disclose their invention or intellectual property to RPKM?

All persons covered under UVic policy 1180. This is defined as members of the university in their university-related work and/or using university resources. Members of the university are defined as all:

  • faculty members holding one of the following academic appointments at the University: a tenured appointment or an appointment with eligibility for tenure as assistant professor, associate professor or professor
  • senior instructors, lecturers, adjunct professors, honorary professors
  • limited-term appointment with a term of more than one year
  • artist-in-residence
  • librarians holding a regular librarian appointment (regular or confirmed) or limited-term appointment as a librarian and includes an archivist
  • graduate and undergraduate students, post-doctoral fellows, and research associate appointees
  • external research contractors, unless there are written contract clauses that stipulate otherwise and that have been approved by the vice-president research or delegate and an authorized individual representing the contractor

When should I contact RPKM about my invention?

RPKM encourages an early disclosure in order to prevent inadvertent public disclosures which could hinder or even prevent any patenting protection for your intellectual property.

Although the official disclosure requirement for commercially-viable IP is three months from creation, RPKM encourages disclosure even while you are still in the process of developing the innovation. This will allow our staff to work with you on all the options for successful knowledge transfer, including the development of long-term partnerships.

What is UVic’s intellectual property policy?

UVic's intellectual property policy is a “creator-owned” policy designed to promote a supportive climate for the development of IP and the provision of services based upon mutually beneficial partnerships that respect the interests of researchers and creators, the university, and the wider community.

As with almost all university “creator owned” policies, creators own the IP subject to the terms of an sponsored research agreements and in all cases have a revenue sharing obligation with the university where commercialization of IP takes place.

Creators are required to disclose their IP to the university (RPKM). The confidential disclosure of patentable IP should be made within three months after the creation of the IP and confidentiality must be maintained until such protection is secured by the university or the university has passed on the opportunity to participate. Please see the above link to view formal policies in detail.

What is UVic’s official policy on invention disclosures?

UVic’s policy on intellectual property is as follows:

“Where IP is anticipated to be commercially viable, it shall be disclosed by the University member on a confidential basis at as early a stage of development as possible to the university. In this manner, the University shall ensure that it has the first opportunity to offer its services through the OVPR / IDC (now UVic Industry Partnerships). In order to protect eligibility for patent, the confidential disclosure of patentable IP should be made within three months after the creation of the IP; confidentiality must be maintained until such protection is secured.”

What is public disclosure, and what are its implications?

Public disclosure is any form of disseminating information about your IP to a non-intimate member or members of the public. It can take many forms, for example:

  • Publishing information about your IP
  • Giving a spoken or visual presentation about the IP
  • Discussing your IP with someone who is not a privileged colleague (such as a contributor, business advisor, family member) or any member of the public not under a confidentiality agreement
  • Using your IP in a public location, making it visible to the public at anytime, intentionally or otherwise, for instance in the passenger seat of a parked car.

Prior to public disclosure, you have the ability to file for protection of your IP throughout the world as long as it meets the other requirements for IP protection, (i.e. novelty of invention and non-obviousness). Canada and the United States has a one year grace period for patent protection after the public disclosure, but this is not the case in the rest of the world. If you are unsure whether or not you have publicly disclosed your IP, contact UVic Industry Partnerships as soon as possible to learn more about the options of protecting your work.

Where can I find more UVic policies related to research and intellectual property?

All UVic policies can be found online at the University Secretary’s website.

Does it cost anything to work with RPKM?

RPKM does not charge faculty members, staff members or students for its time. However, any hard cost incurred by RPKM for marketing, legal and IP-protection, etc., (all non-staff project related expenses) are deducted from first revenues received prior to any parties participating in revenue share.

What if my discovery is made during the course of a sponsored research project?

In case of the invention that is a result of a sponsor-funded research, the rights to the resulting IP and to commercialization proceeds are subject to the terms of the sponsored research agreement. Such agreements frequently assign some or all of the rights in IP resulting from the research to the sponsor. Therefore, it is very beneficial for the researchers to be aware of any obligations entailed by the terms of sponsor research agreement.

How are revenues shared?

To meet its role as a research and educational institution, UVic strives to provide incentives for the pursuit of research and creative activities. Revenue sharing is one such incentive.

The university supports the principle that the revenue accruing from IP should be shared fairly and proportionately between the creator(s) and the university in relation to the contributions of the university and the creators. The contributions of the university may include but are not limited to the following:

  • provision of paid release time (over and above any academic leave or professional development leave) for the development of IP
  • provision of remuneration over and above regular salary for the development of IP
  • provision of space, facilities, and equipment for the development of IP over and above normal infrastructure requirements
  • the expansion of the commercial potential of a piece of IP by UVic or RPKM action
  • the ratio of liability assumed by the university, RPKM, and the creator
  • the negotiation of any contractual agreements with external research or development partners.

The university’s share of net revenues accruing from the commercialization of IP is as follows:

  • when the university’s technology transfer services have been utilized for commercialization of the IP, the terms of revenue sharing (for IP other than course materials) shall be negotiated by the vice-president research or delegate, in consultation with other parties as appropriate, in accordance with the guiding principle of net benefits following the contributions of all parties;
  • when the university indicates an interest in commercializing the IP, but the university member chooses to commercialize elsewhere, the university shall normally claim 20% of net revenues that result from the commercialization to reflect the university’s infrastructure investment and to ensure a return on investment to support further research and creative activity. This clause shall not apply if the university has indicated in writing that it has no interest in commercializing the IP or the net revenues concerned are less than $5,000 in a calendar year;
  • UVic and the university member shall receive equal shares of the net revenue resulting from commercialization of course materials

Who is an inventor?

For the purpose of determining who is an inventor, only a person’s role in the conception (idea) stage is considered. Each person who makes an original and substantive contribution to conceiving the thing ultimately invented or one of its essential elements is legally entitled to be named as an inventor. An inventor is one who formulates and describes the means of making the thing ultimately invented.

A person will not be considered an inventor, if he or she merely:

  • Suggested or thought about an idea or end result or posed the question to be solved, but did not also come up with the actual way of implementing the idea, achieving the end result or solving the problem
  • Contributed an obvious, rather than an original and substantive, element of the invention
  • Was involved in testing or reducing someone else’s idea into practice
  • Suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual invention
  • Followed instructions of those who conceived the end result or solution
  • Is the department head, supervisor or head of the laboratory where the invention was developed, but did not contribute directly and substantially to the inventive process
  • Provided funding for the research, equipment or laboratory where the invention was created.

Inventorship is also different than authorship. A person may be an author or co-author of a publication describing an invention, but will not be considered a co-inventor unless he or she made an independent conceptual contribution to the invention.

Who qualifies as a joint or co-inventor?

An invention may have more than one inventor. To qualify as a joint or co-inventor, you must have made an independent, conceptual contribution to an invention or one of its essential elements. The contribution must be substantial and one that makes a difference in the essence, use, application or production of the invention.

Joint or co-inventorship requires some form of communication between the inventors. It is not necessary, however, that they physically work together or for the ideas to have occurred to the co-inventors at the same time. Rather the invention is the result of collaboration, each co-inventor contributing in an original substantive way to conceiving that which is ultimately invented.