What is a Report of Invention (ROI)?
A Report of Invention (ROI) is an internal, confidential electronic document in which you describe your invention, name the inventor(s) and their faculty affiliation(s), define their relative contribution to the invention, refer to the source of funding leading to the invention, and to which you should attach any pertinent description of the invention (e.g. manuscripts or grant proposals). The ROI is not a patent application and does not provide any protection to your invention.
How do I know if my research has generated an invention?
The Office of Innovation (the Office) will help you with this analysis and encourages you to submit the Report of Invention for all research results that might solve existing and significant problems.
When should I submit a Report of Invention?
It is highly recommended to submit the Report of Invention as soon as you have developed something unique and novel with commercial potential. This submission should be well ahead of disclosing your results through manuscripts, posters, conference presentations, abstracts, or any other forms of communication. If disclosed prior to the filing of a patent application, the invention has lost its novelty and its patent protection is restricted to only a few countries.
Should I file a Report of Invention on animal models and other research tools?
While we might not patent research tools (antibodies, bacteria, cell lines, animal models, others), the Office of Innovation can help you to license them to research tool manufacturers or distributors. As long as they have not been widely distributed before they are licensed, research tools could generate revenue for your laboratory without requiring any patent protection.
Should I file a Report of Invention on software?
According to the McGill Policy on Inventions and Software (http://www.mcgill.ca/research/researchers/policies), intention to commercialize any invention, including software, must be reported to the Office. While we might not assume responsibility for commercializing all new software, content, databases, apps, and websites that are reported, we may be able to point you in the right direction so that you can commercialize them yourself.
Once I am ready, how do I submit a Report of Invention?
Starting September 2017, ROIs have to be submitted online, according to the process described on our website (http://www.mcgill.ca/research/researchers/ip/reporting). If you have any questions, or need support please do not hesitate to contact the Office of Innovation.
I filed a Report of Invention. What happens next?
A successfully submitted Report of Invention initiates a process, as described in the Guidelines to the McGill Policy on Inventions and Software (http://www.mcgill.ca/research/researchers/policies), which might lead to protection and commercialization of your invention. The Office will examine your ROI for completeness within three (3) weeks following its submission as an online disclosure. If any information is missing, the inventors will have ninety (90) days after receipt of our request to complete the missing information, otherwise the ROI will be automatically rejected. Once the ROI is complete and has been accepted, the Office will perform an initial review with the inventors within sixty (60) days by walking you through “preliminary review questions.” After a positive initial review, the Office has ninety (90) days to perform a due diligence review, including patentability and merchantability assessments that will result in a mutually agreed commercialization plan.
How is an “Inventor” defined under the McGill Policy on Inventions and Software?
According to the McGill Policy on Inventions and Software, section 2.6, an Inventor is any student, employee, or appointee of the University, whether academic or administrative and support staff, or any physical person, such as a visiting professor, working or doing research at or under the auspices of the University, who satisfies the applicable statutory requirements of inventorship (http://www.mcgill.ca/research/researchers/policies). This also applies to creators of software.
How should McGill Inventors be defined in a Report of Invention?
Once the potential Inventors are identified, the Office of Innovation and Partnerships and external patent counsel will help to differentiate actual Inventors from contributors who only provided experimental or other support. Inventorship is defined by patent law.
What if I worked on my invention with visiting researchers or researchers at other institutions/companies?
All Inventors should be mentioned so that the Office and/or patent counsel can determine the rights of non-McGill inventors. It is advisable to discuss all collaboration partners related to the invention with the Office prior to filing the Report of Invention to understand the implications for the future of the invention.
What if I created the invention with someone external to McGill?
Should the technology be jointly owned, McGill will establish an interinstitutional agreement with the other institution(s) in which responsibilities like leadership of patent protection and licensing efforts are distributed and the sharing of expenses and potential licensing revenues are determined. If there are agreements that link the Intellectual Property (IP) to a company, the Office of Innovation and Partnerships has to analyse the University’s obligation towards the outside parties and negotiate an appropriate patenting and licensing strategy for any jointly owned IP.