The commercialization of research outcomes is an important objective not just of researchers, but of most public and private funding programs as well. It can also be very rewarding, with potential impact on society, the economy and the environment at large.
Contact the team at Innovation and Partnership for more details.
Frequently asked questions:
What is a “pre-disclosure” stage of the technology transfer process?
“Pre-disclosure” refers to the stage from which the Office of Innovation (the Office) begins to work with researchers, to the time that they formally report a new invention to us. This also refers to the stage during which researchers are interested in the commercialization process and want to discuss and learn more about how intellectual property and commercialization work at McGill.
What are the usual events that occur during this “pre-disclosure” stage of the technology transfer process?
A Technology Transfer Manager is available to meet with you and explain our process and outline the various steps required to move through the commercialization process. We can also advise you on when you should formally submit a Report of Invention (ROI) and what you are likely to need in terms of research findings in order to bring the technology to a development stage at which the ROI will be accepted and a patent application can be considered.
What are the factors that I should consider prior to filing a Report of invention with McGill’s Office of Innovation and Partnerships?
McGill researchers, including professors, staff, graduate students, and post-doctoral fellows, are encouraged to contact the Office of Innovation in the early stages of the development of your technology. While your invention may be too early to consider filing a patent, we can meet with you and let you know what data/results you will need before the invention is ready to be reported to the Office. We can then consider patent protection and start discussing possible paths towards commercialization. As public disclosure of your technology can result in a loss of patent rights in some jurisdictions, it is important to speak with a Technology Transfer Manager prior to publishing your research findings or sharing them with any third party. This includes any public presentation, either in hard copy or online, such as conference abstracts and presentations, theses, journal papers, posters, social media, etc.
Reporting an Invention
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 (https://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 (https://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 (https://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 (https://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.
Why does McGill assess reported inventions?
Before devoting financial and physical resources, McGill needs to determine whether a technology has commercial potential and if the invention should be protected via patent or copyright.
What is involved in an assessment?
The tools typically used in an assessment include:
- Market study
- Intellectual property search
- Review of previous disclosures
- Discussion of potential partners
- Potential path to market (licensing versus a start-up)
- Identification of any licensing barriers
What is my role in the assessment?
The researchers play a key role in the assessment, as they have the deepest knowledge of the invention and may have already received external technical feedback on the technology. Some specific contributions include:
- Provide a list of publications, grants, and disclosures
- Have companies already been contacted about this technology? Have they contacted you?
- Participate in patent searches and review prior art to assist in determining novelty and non-obviousness
- Declare any conflicts of interest
Based on the outcome of the assessment, what happens next?
If the assessment is positive, the invention will move to the next phase of the technology transfer process, where the strategy for protecting and commercializing the technology will be developed as part of the commercialization plan. If the assessment is negative, the invention will be declined by the Office of Innovation (the Office). If desired, McGill’s rights in the technology can be transferred to the inventors so they can pursue commercialization on their own, as described in the Policy on Inventions and Software (https://mcgill.ca/research/researchers/policies).
What is a patent?
A patent gives the patent owner the right to exclude third parties from making, using, selling, and importing the protected invention. A “right to exclude” does not necessarily authorize the owner to practice a technology, as it might be linked to a patent(s) owned by a third party.
A patent consists of three parts: 1) the “specification” describing the invention, 2) the “claims” defining the novel and useful aspects of the invention in legal terms, and 3) the “abstract” which summarizes the first and broadest claim.
How are patents governed?
Each country governs their own patents. In the United States, the United States patent and trademark office (USPTO) is the federal agency that administers patents on behalf of the U.S. government. The equivalent organization in Canada is the Canadian Intellectual Property Office (CIPO). These organizations employ patent examiners skilled in all technical fields in order to appraise patent applications. These offices also issue trademark registrations.
What qualifies as patentable subject matter?
Patentable subject matter includes processes, machines, compositions of matter, articles of manufacture, and methods, specifically the ones that leave an indication in the final product so that a method patent can be enforced. However, each jurisdiction has its specific restrictions.
What if my invention is software? Can it be patented?
Software can possibly be patented, but it is challenging. Formulae and algorithms are generally not patentable, so a careful review of software and its functionality must be completed. Additionally, we have been successful commercializing software without any patents and given the time to market for software products, the technology may be obsolete before the patent is issued.
How is an inventor on a patent defined?
The only country (jurisdiction) defining an inventor by law is the United States, where an inventor is a person who conceptualized the invention as described in the claims of a patent application. As the claims may be changed during prosecution of the application, even the inventors can change. Inventorship is best confirmed by the patent agent prosecuting the application. Monetary contribution to making the invention is not sufficient to be considered an inventor.
How does the patenting process work?
Patent attorneys or patent agents draft, file, and support the prosecution of patent applications. After filing a utility patent application, the patent agents and the patent examiners of the patent agencies exchange arguments regarding the validity of the claims of the application as filed and as they might relate to so-called “prior art”, which is anything that has been published before. The communication sent by the patent agency is referred to as an “office action”. If the claims become “allowable”, the examiner agrees to issue a patent.
Who is responsible for the patenting process?
The Office of Innovation (the Office) works with external patent specialists in different technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to worldwide patent offices.
How much does it cost to file for, and obtain, a patent?
The cost of patent prosecution is expensive. Filing a US provisional patent application and a subsequent utility patent application typically costs approximately $10,000, with a final cost which could exceed $30,000 for an issued patent. Filings in other jurisdictions can be obtained via a PCT application (patent cooperation treaty, which works like a place-holder) which costs an additional $10,000. After issuance, maintenance fees have to be paid, and these costs increase with time.
As an inventor, what role do I play in the patenting process?
When an application is filed, inventor(s) have to transfer the rights to the patent application to the University in an “Assignment.” During prosecution, inventors have to provide: 1) all publications referenced in the application for the “Information Disclosure Statement,” which is essential for the enforceability and validity of the issued patent, and 2) input to defend the technical aspects of the invention against the prior art.
What if I publicly disclose my research results before filing? Can I still get a patent?
Publishing or presenting your invention before submitting a patent application has an impact, and may prevent a patent filing. The Office of Innovation and Partnerships would like to know about your invention before you publish, lecture, present posters, abstracts, website descriptions, posts on social media, submit research proposals or theses, or offer the invention to a third party.
Is a patent like a publication, where the order of the authors relates to their contribution?
A patent application is not like a publication. There is no distinction between inventor contributions on a patent application.
What is a provisional patent application?
In most jurisdictions, two types of patent applications exist: a “provisional” which is never examined, but defines the priority date and allows the addition of further examples, and a “nonprovisional” which has to be filed one year after the provisional and represents the final form of the specification. This nonprovisional patent application is the one which will be examined.
Why not just file a regular (“nonprovisional” or “utility”) patent application instead of a provisional?
The US provisional patent application still preserves patent rights, postpones costly patent prosecution, and allows for the addition of new examples. It provides the inventors with twelve months’ time to further develop their commercialization plan before having to file a nonprovisional application.
What if I want to file a patent application around the world but have published my invention?
While the US, Canada and Australia have a grace period, where you can publish and still file a patent application until the one-year anniversary of the publication, foreign patent protection depends strictly on novelty.
Can I get an international patent?
International patents do not exist. However, the Patent Cooperation Treaty (PCT), an international agreement signed by most industrialized nations, is a place-holder to provide time to determine in which jurisdictions an invention should be protected. The PCT application must be filed no later than twelve (12) months after the priority date of an application, and will have to be converted into national patent applications depending on the jurisdiction within 30 months (US) to 42 months (Canada) of the earliest claimed filing date.
How long does a patent application stay out of the public domain?
The content of US provisional applications and their subsequent US utility or PCT filings is published 18 months after the initial priority date. After that date, the application and all documents related to its prosecution are publicly available.
How long does the patenting process take? How long will my invention have patent protection?
The length of the patenting process depends on the backlog of the patent agencies, the response periods of the applicants, and the comprehension of the technology by the examiners. Once a patent is issued and all maintenance fees are paid, it is normally valid for 20 years from the initial filing date.
Why is some intellectual property protected through patenting?
Commercial partners, such as licensees, have to commit substantial investment to develop your invention to a marketable product. A patent offers them a monopoly. Due to the financial investment and time requirements to obtain a patent, not all inventions can be patented. As well, not all inventions require patent protection to be commercialized.
Who makes the decision regarding when to patent?
The Office of Innovation will review with the inventor(s) the recommendations provided in the due diligence report. The Office makes the final decision whether a patent application should be filed. A decision by the Office cannot be appealed. However, if the inventor(s) are in disagreement, the rights to the invention can be transferred to the inventor(s) who can subsequently pursue patent prosecution and commercialization of the invention themselves.
Is a licensee required for an invention to go through the patent process?
The Office of Innovation may file a provisional patent application before a licensee has been identified. After entering into an exclusive license to the technology and the associated IP, the licensee pays the patenting expenses. However, the Office will stop prosecution at decision points identified in the commercialization plan, especially if no parties show interest in licensing the invention.
What is a copyright and why should I use it?
A copyright is an intellectual property right which establishes the exclusive legal right to produce, reproduce, publish, or perform an original creation, such as a literary (including software), artistic, dramatic or musical work. This allows the owner of the work to control who can use it and how it can be used.
Does McGill file copyright registrations with the CIPO?
Registration of copyright is not required for it to be valid. However, if the commercialization plan identifies that copyright registration is needed, McGill will proceed with a filing.
Is the Office of Innovation responsible for the commercialization of copyrightable materials?
The Office of Innovation (the Office) commercializes only software copyright material covered under the McGill intellectual property policy. All other copyrights belong to the creator/author and can be commercialized without the involvement of the Office.
How do I properly represent a copyright notice?
The format is shown below. If the work has been disclosed as an invention, the owner is McGill University, otherwise the creators should be listed. The date references the year the work was created.
© Owner Date
How can I learn more about McGill’s copyright policies?
Please refer to the following link: https://mcgill.ca/copyright/
Does McGill register trademarks?
McGill does not register trademarks. This is the responsibility of the inventors.
After deciding to commercialize an invention, inventors and Technology Transfer Managers will work together toward getting the technology licensed to existing companies or creating a McGill spin-off.
If a technology is licensed, 60% of the licensing revenue is awarded to the inventor(s) and 40% to the University, after its third-party costs (primarily patent costs) are deducted.
The Office of Innovation can help inventors further their inventions by seeking development partners; it also has access to GAP funding through three programs: NSERC's I2I , CIHR's POP, and the MDEIE's PSVT. This gap funding will be used for valorization of the invention through additional development activities with the objective to bring the technology closer to a marketable stage. These will make the invention of significant interest to a licensee or to a start-up company but require the input and collaboration of the inventors to ensure a successful outcome.
Steps for licensing an invention
Generally, the process for successfully licensing an invention is as follows:
- Developing appropriate marketing materials.
- Identifying and targeting suitable potential recipients for the technology.
- Contacting and meeting with interested parties.
- Negotiating an option or a licensing agreement.
- Carrying an agreement through.
Please note that due to the early stage of most university inventions, the licensing process can often take several years before the invention is applied commercially, and that additional development work is often needed to validate inventions.