Intellectual Property and Commercialization Principles Policy

Policy Number: GC-4100-2013

Policy Title: Intellectual Property and Commercialization Principles Policy

Policy Owner: General Counsel & Corporate Secretary, Vice President, Academic

Effective Date: March 6, 2013

Last Revised: March 22, 2023

1. Purpose

Mohawk College (“the College”) values academic excellence, inquisitiveness and curiosity. The Intellectual Property Policy reflects these values and seeks to encourage creativity and innovation, openness, and the sharing of ideas among employees, students and third-party contractors.

Inventions and creative works developed by individuals under the authority of the College may have commercial as well as scientific and scholarly value. This policy governs the ownership and commercialization of any resulting Intellectual Property rights.

It is the responsibility of all College employees and students to understand and act within the confines of this policy.

Refer to the Copyright Policy for information regarding the use of copyright protected materials by employees and students at the College.

2. Application and Scope

This policy applies to all College employees either in full-time or part-time employment, including employees in the Academic and Support Staff bargaining units, sessional and part time employees and administrative employees as well as contractors, consultants, volunteers, students, students employed by the College, students conducting research as an academic requirement, and all other persons who engage in projects carried out under the authority of or in affiliation with the College which involve using the College’s employees, students, facilities, and/or resources including Ideaworks and The Centre for Entrepreneurship.

This policy also extends to third parties who participate in collaborative research projects and/or joint initiatives, such as industry or sector partners; however, if any part of this policy conflicts with provisions of a signed agreement between the College and a third party, the provisions of the signed agreement will prevail.

Intellectual Property covered by this policy has the meaning defined in the “Definitions” section below. This policy does not apply to Intellectual Property created in the course of non-College activities that are not carried out under the authority of or in affiliation with the College and do not make use of the College’s employees, students, facilities and/or resources.

3. Definitions

“Assigned Tasks” are work-related administrative activities such as the preparation of reports, business processes, training material and computer programs written to support the College’s on-going operations. Assigned Tasks do not normally include Curriculum or Scholarly Works (as defined below).

“Author” refers to the person who exercised the skill and judgment that resulted in the expression of a Work or Industrial Design in a material form. In general, this is the person or persons who actually wrote, drew or composed it. Persons who contribute only ideas or concepts to a Work or an Industrial Design may be entitled to recognition as a Contributor, but may not be considered Authors in law or be granted a proprietary interest in the Copyright or any issued Industrial Design. The Author is not the first owner of Copyright for: (a) Works developed in the course of employment; or (b) Works prepared or published by or under the direction of the government.

“Collaborative Research” is research undertaken by any employee or student of the College in cooperation with third party who may or may not be affiliated with the College.

“Commercialization” is the process of introducing a new product or production method into the commercial market which involves securing legal protection for related Intellectual Property developed at the College and usually licensing or assigning such Intellectual Property to third parties with the goal of generating a financial return.

“Computer Program” is set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result.

“Conflict of Interest” whether perceived or actual, exists when a member of the College employee is or is perceived to be in a position to use research, knowledge, authority or influence for personal or family gain or to benefit others to the detriment of the College. (Reference should be made to Policy Number M-1306-M1979).

“Contributor” is a person or agency who may or may not be an Author, but contributes ideas, concepts or financial support to a Scholarly Work and are entitled to be recognized for their contribution upon publication of the Scholarly Work.

“Copyright” is a statutory monopoly recognized by the federal government through the Copyright Act in a Work. In Canada, the owner of Copyright in a Work has the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof and to authorize such acts, including the sole right to translate, adapt, exhibit or rent the Work.

“Confidential Information, Know-How and Trade Secrets” are, generally, confidentially held information in the form of marketing plans, customer lists, source code, algorithms, formulae, drawings, procedures and methods and the accumulated skills and experience which could assist in the manufacture of a product or the provision of a service for competitive advantage and may include unpublished Inventions and industrial designs for which a Patent or Industrial Design application has not yet been filed.

“Creators” refers collectively to both Authors and Inventors who are employed or contracted to perform services for the College. It does not include the College.

“Curriculum” refers to all subject matter developed by Creator(s) in the course of teaching at the College to support classroom curriculum or to support the delivery of curriculum or academic programs and services, including but not limited to assignments, laboratory manuals and examinations.

“Domain Names” are, generally, simple identification labels used to identify an address where resources may be located via the Internet, including the web site for the College which is located at https://www.mohawkcollege.ca.

“Ideaworks” is a College program which provides students with practical experience in applied research and innovation. It supports start-ups, established businesses and community organizations by providing access to expertise, specialized equipment and services to reduce the risks associated with testing and adopting new technology.

“Industrial Design” is a statutory monopoly available from the federal government through the Industrial Design Act in a novel design for a “useful article”. Protection is available for shapes, configurations, patterns, ornamentation (or any combination thereof) that, in a finished article, appeal to and are judged solely by the eye, including useful articles like furniture, wallpaper, carpets, automobiles, cutlery, clothing, etc. In Canada, an application for an Industrial Design must be filed within one year after Publication and generally expires 10 years after filing. In other countries, equivalent industrial design protection may not be available at all if there is any Publication of the subject matter prior to the filing of an application for registration.

“Informed Consent” is consent given by an individual who has received the information necessary to allow a considered judgement, who has adequately understood the information, and who has arrived at a decision of consent without having been subjected to coercion, undue influence, inducement or intimidation.

“Integrated Circuit Topographies” is a statutory monopoly available from the federal government through the Integrated Circuit Topographies Act for the three-dimensional layout or topography of an integrated circuit used in electronic equipment. In Canada, an application to register a new topography must be filed within two years after its first commercial exploitation and generally expires 10 years after filing.

“Intellectual Property (IP)” includes all patents, trademarks, copyrights, moral rights, industrial designs, integrated circuit topographies, inventions, trade secrets, confidential information, know-how, domain names, and all applications and registrations therefore, whether issued or pending, all rights to apply for the same anywhere in the world.

“Invention” is, generally, a novel product or process that provides a solution to a technological problem.

“Inventor” is, generally, anyone who contributes to the formulation and ultimate expression of the inventive concept or reduction to practice of an Invention. Simply postulating a problem or following instruction is not sufficient to make one an Inventor.

“Joint authorship” generally exists where an original work is created through collaboration of two or more Authors in which the contribution of one Author is not distinct from the contribution of the other Author(s).

“Moral Rights” are rights granted exclusively to the Author of a Work for the duration of Copyright and include: (1) the right to the integrity of a Work, including the right to protect a Work from: (a) distortion, mutilation or modification; or (b) being used in association with a product, service, cause or institution to the prejudice of the honour or reputation of the author; and (2) the right to be associated with a Work as its author (by name or pseudonym), where reasonable in the circumstances, or to remain anonymous. Moral rights cannot be sold or assigned - they can only be waived.

“Net Income” shall mean the gross income to the College arising from the licensing or sale of Intellectual Property owned by or assigned to the College, namely (revenue less direct costs) less applicable indirect costs.

“Official Marks” are the words, arms, crests and flags adopted by a government agency, the military, colleges, universities, hospitals and other “public authorities” which are recorded by the federal government on the trademarks register. Subject to a few possible exceptions, the owner of an Official Mark has the exclusive right to use it throughout Canada for all purposes. Official Marks do not expire but may be withdrawn. The College has recorded several Official Marks. While the College may license Official Marks to third parties, the marks must also continue to be used by the College to maintain their validity as Official Marks.

“Patent” is a statutory monopoly granted by the federal government through the Patent Act to make, construct, use and sell an invention for a specified period of time. Patents are not available for mere scientific principles or abstract theorems, for higher life forms per se, for methods of medical treatment, or inventions which have an illicit object in view. In Canada, an application for a Patent must be filed within one year after Publication and generally expires 20 years after filing. In other countries, patent protection may not be available at all if there is any Publication of the subject Invention prior to the filing of a patent application.

“Publication” is the process of making information available to the general public or any third party with no duty of confidentiality to the disclosing party and may occur by way of speech, print, paper, electronic or other means. Any Publication of an Invention or design may render the subject matter ineligible for later protection as a Patent or Industrial Design.

“Scholarly Work” is subject matter created in the course of research or study under the authority of the College which may be eligible for Intellectual Property protection, including journal articles published in academic journals.

“Trademark” a trademark is one or more words, a graphic design, a melody or a unique form of packaging (or a combination thereof) that is used to distinguish the goods or services of one business from its competitors in the marketplace. The federal government regulates the ownership of Trademarks through the Trademarks Act and exclusive rights in a trademark are granted to the first business to use a trademark in Canada. The owner of a registered Trademark has the exclusive right to use it throughout Canada and may renew the registration indefinitely. The first business to use an unregistered Trademark (that does not conflict with a registered Trademark) has the exclusive right to use it only in the geographic region where the business enjoys a current reputation. The College has registered a few Trademarks primarily for use by Mohawk College Enterprise as a licensee.

“Work” is any subject matter eligible for copyright protection and includes every original literary, artistic, musical or dramatic work in fixed form in any form whatsoever, including but not limited to tables, computer programs, compilations, books, pamphlets and other writings, lectures, dramatic or dramatic-musical works, musical works, translations, illustrations, sketches, technical and architectural drawings, sculptures and plastic works.

4. Principles

Within an academic context, this policy is intended to encourage the development, protection and commercialization of Intellectual Property rights to enhance the competitiveness of businesses and industries in Ontario for the benefit of Ontario and Canada while allowing the College to facilitate and share in the proceeds of the commercialization of such Intellectual Property.

The College has long engaged in collaboration with other postsecondary institutions as well as private businesses to encourage innovation and entrepreneurship while educating its students. The College is dedicated to continuing to build its institutional capacity to assist its students, employees and community partners to commercialize innovation and continuously improve its practices in this regard.

The General Counsel and Corporate Secretary and Ideaworks decisions and actions with respect to Intellectual Property must reflect the values and behaviours described in the Employee Code of Conduct.

5. Accountability and Compliance

5.1 Accountability Framework

This policy has been approved by the Senior Leadership Team.

5.2 Compliance

The General Counsel and Corporate Secretary and Vice President, Academic are responsible for monitoring compliance with the policy and updating it as required.

Ideaworks is responsible for continuing to build the institutional capacity of the College to assist its students, employees and community partners to commercialize innovation and seek opportunities to collaborate with other post-secondary institutions in this regard when warranted. In particular, it shall:

Ensure that a web page on the College web site containing a copy of this policy, other related College policies, the commercialization plans for the College (see below) as well as educational resources and information respecting entrepreneurship and Intellectual Property;
coordinate with other College programs engaged in collaboration with private business with respect to best practices and opportunities for improvement;
develop, improve and provide access to information, education and training respecting entrepreneurship and Intellectual Property for College employees, students and third-party contractors; and
maintaining relationships with IP Ontario and other parties participating in the innovation ecosystem by engaging with provincial and national business groups such as incubators, research institutes and business associations.

5.3 Annual Plan

On or before November 30th each year, Ideaworks will prepare and publish an updated commercialization plan for the College containing:

a summary and outcome metrics respecting the status and impact over the past year of its program and all other programs through which the College engages in collaboration with private businesses;
a summary and progress metrics respecting its engagements over the past year with IP Ontario, other post-secondary institutions and other parties in the innovation eco-system to promote entrepreneurship and the commercialization of Intellectual Property rights;
a summary and progress metrics respecting steps taken over the past year to provide information, training and education respecting entrepreneurship and Intellectual Property to College employees, students and contractors; and
a timeline to implement any new initiatives contemplated by the College to further build its institutional capacity to assist its students, employees and local business community to commercialize innovation.

6. Rules

6.1 General

This Policy governs the ownership of Intellectual Property developed by employees, students and third-party contractors under the authority of the College and how any revenues resulting from the commercialization of such Intellectual Property will be distributed.

6.2 Administration

All commercialization discussions should go to Ideaworks first, even if the specific subject of commercialization is from a different area of the College. Ideaworks can involve the Office of the General Counsel and Corporate Secretary for legal support on commercialization matters, as needed.

Ideaworks shall assist employees, students and third-party contractors in the following ways:

Review all written disclosures of Intellectual Property in a timely manner;
Serve as a resource in the commercialization process, in co-operation with or via referral to external partners, agents, legal and business experts, to review the patentability, registrability and marketability of the Intellectual Property; to obtain patent, industrial design, copyright, trademark or other protection for the Intellectual Property; to assess the commercial strategies available; to negotiate licensing and other agreements with third parties; and to gain access to venture capital; and,
Assist in the writing of grant applications for prototype, development, or other funding.

General Counsel and Corporate Secretary shall assist employees, students and third-party contractors in the following ways:

Respond to questions regarding the application, interpretation, and implementation of this policy;
Develop and manage all Intellectual Property precedent documents, including confidentiality agreements, license agreements, and revenue sharing agreements.

6.3 Moral Rights

Whether or not the College owns copyright in a Work, it will respect the moral rights of the Authors. This includes giving recognition to the Author(s) where feasible or, if the Author(s) so request, allowing the Author(s) to remain anonymous.

6.4 Ownership by Creators and License to the College in Scholarly Works

Except as stipulated elsewhere in this Policy, Intellectual Property rights in Works and Inventions created in the course of educational or research activities conducted under the authority of the College or in affiliation with the College or by using the College’s employees, students, facilities and/or resources shall belong solely and exclusively to the Creator(s).

The exceptions are:

A work commissioned by the College, or produced pursuant to the individuals normal role with the College, including an employee’s normal administrative or professional duties with the College, shall be and remain the Intellectual Property of the College.
The subject matter in which Intellectual Property rights subsists was developed by the Creator(s)as part of an externally sponsored research program or Collaborative Research project and the ownership of any Intellectual Property rights in the subject matter is determined by contractual terms or the regulations of the sponsor which are inconsistent with this Policy. The leader(s) of such research programs are obliged to inform participants when and how the contractual terms or regulations differ from this Policy.
The College shall be the first owner of the Intellectual Property rights in all subject matter developed by the Creator(s) in the course of their Assigned Tasks or under a negotiated understanding and/or formal agreement with the College which may assign such rights to the College or a designated third party.
The College shall be granted a non-exclusive, royalty-free, irrevocable, indivisible, and non-transferrable licence to reproduce, publish, perform, telecommunicate, exhibit, record or otherwise exploit all Scholarly Works for academic and research purposes that comes from the use of College resources, and/or through the individuals’ normal role with the College (e.g., employee or third party contractor).

6.4.1 Professional Development Leave

The ownership of Intellectual Property rights in Works or Inventions developed by employees during a professional development leave shall be the property of the employee unless agreed otherwise according to the circumstances. For example, if an employee uses College resources in the development of Works or Inventions for use in the Curriculum or administration of the College, the College shall be the presumptive first owner of the Intellectual Property Rights. If in doubt, employees are encouraged to review their plans in advance with the Office of General Counsel and Corporate Secretary to determine the position of the College.

6.5 Communication and Dissemination

The College will obtain the consent of the Creator before entering into third-party agreements which may preclude or restrict the Creator’s ability to publish the results of their research.

The College has an interest in maintaining the unrestricted dissemination of knowledge and information developed by employees, students and third-party contractors as members of the College community. For this reason, the College generally encourages employees and other personnel to publish the findings of their research.

However, where the College or the Creator(s) intend to preserve exclusive rights in the subject matter as Trade Secrets or to later seek Patent or Industrial Design protection, Publication may be delayed. Such decision will not be made without consultation with the Creator(s). For example, applications for Patents and Industrial Designs must be filed in Canada within one year following Publication of the subject matter.

6.6 Disclosure and Commercialization

Creators who intend to either publish or attempt to commercialize Intellectual Property developed under the authority of or in affiliation with the College or by using the College’s employees, students, facilities and/or resources must inform their Manager or the Dean responsible for their program, in advance and in writing, of the nature of the Intellectual Property, the identity of all the relevant Contributors and how they intend to publish or commercialize it. This obligation applies whether or not the Creators believe themselves to be the sole and exclusive owners of the Intellectual Property pursuant to this policy. See Intellectual Property Disclosure Form as shown at Attachment 1 for an outline of the requested information for an Invention.

The responsible Manager or Dean must then forward the information to Ideaworks. Such an advance notice is required to ensure that timely steps can be taken, when available, necessary and desirable, to preserve legal rights in the Intellectual Property for the benefit of the College where applicable. Subject to any agreement with the Creators or other legal obligations, the College will keep the provided information confidential.

6.7 Commercialization Process

Creators who elect to commercialize Intellectual Property developed under the authority of or in affiliation with the College or by using the College’s employees, students, facilities and/or resources must disclose such election to Ideaworks when making the disclosure as described above in section 6.6. Again, this obligation applies whether or not the Creators believe themselves to be the sole and exclusive owners of the Intellectual Property pursuant to this policy.
The decision to commercialize Intellectual Property rests solely with the Creators, except where the College is the first owner of the Intellectual Property or ownership of the Intellectual Property is determined in whole or in part by contractual terms or the regulations of an external sponsor as described above in paragraphs 6.4(a), 6.4(b) and 6.4(c). Where these exceptions apply, prior consent from the College and any other owner is required.
Where the Creators are the sole and exclusive owners of Intellectual Property, they may seek assistance from the College to commercialize it but are not obliged to do so.
If the Creators wish to request assistance from the College with respect to commercializing any Intellectual Property, such requests should be submitted in writing to Ideaworks who will advise within two months following receipt of the request whether an investment of College resources in the project has been approved. If the College decides to provide advice or assistance to the Creators in the commercialization process, all the Creators will be required to execute a conditional assignment of all their rights, title and interest in the Intellectual Property and to waive any moral rights therein in favour of the College.

Following any such assignment and waiver, the College will take steps to commence commercialization activities and, when deemed necessary and/or desirable, shall file applications seeking legal protection of the Intellectual Property within twelve (12) months following receipt of the signed assignment and waiver. If the College fails to make reasonable efforts, or effectively abandons such efforts, to commercialize the Intellectual Property for any period exceeding 180 consecutive days, the Creators will be entitled to terminate their agreement with the College and, in such event, all rights granted to the College shall revert to the Creators.

6.8 Income Distribution

Intellectual Property assigned to the College for the purposes of commercialization and which the College licenses or sells to external third parties, the Net Income shall, in the absence of any negotiated agreement, be distributed as follows:

75% payable to the Creator(s); and
25% retained by to the College (with these funds divided evenly between general revenue and the relevant employee or employees).

The foregoing distribution of Net Income may be varied by mutual written agreement between the College, the Creator(s) and any external third parties.

All Creators are entitled to share in the Net Income arising from the commercialization by the College of the Intellectual Property identified in the disclosure described in section 6.6 in proportion to their contribution, unless their entitlement has been waived through informed written consent. In the absence of an agreement between multiple Creators, their contributions will be presumed equal. Creators may also direct payment of all or part of their share of the Net Income to the College, the relevant employee or third parties in their sole discretion.

6.9 Joint Initiatives and Student Work

The College embraces collaboration and encourages involvement in our community, with industries and with other post-secondary institutions.

The College acknowledges that ownership of Intellectual Property rights for materials developed as a joint initiative or under a sponsored research agreement is governed by the terms under which the joint initiative was undertaken or the provisions of the sponsored research agreement.

Prior to the undertaking of any joint initiative, it is recommended that a written agreement be signed by all the parties based on the principle that Creators retain ownership of their work. Where that is not possible, an agreement may stipulate that the College or the sponsor owns some or all of the Intellectual Property resulting from the project. For example, the College may own the Intellectual Property while the sponsor is granted an exclusive license or the option to negotiate a license in core markets.

Where the College enters into a collaborative project with an external third party, the participating employees, students and contractors must be made aware of any obligations related to ownership of the resulting Intellectual Property dictated by the terms under which the project is to be carried out. In such collaborative projects, certain information may be protected as confidential and, in these circumstances, participating employees, students and contractors may be required to sign non-disclosure agreements as additional protection. All collaborative research at the College will be undertaken in a climate of informed consent and any assignment, waiver, or modification of rights of Creators contrary to the terms of this policy must be in writing.

Subject to any agreement with the Creators, students shall be the first owners of any Intellectual Property developed by them in their educational projects, such as projects undertaken as part of course requirements. Where feasible, the College will acknowledge appropriately all the Contributors to any such Intellectual Property when published.

6.10 Use of College IP

6.10.1 Copyright Notice

Where the College is the owner of copyright, it shall where feasible place the following copyright notice in a conspicuous place upon publication of the Works:

6.10.2 Use of Mohawk College Name, Trademarks on Created Works

Subject to any contrary agreement or objection by the College, employees and contractors are obliged to recognize the College as a Contributor in any publication of a Scholarly Work. Although not obliged to do so, students may also acknowledge the College as a Contributor upon publication of any Scholarly Work developed during the course of studies at the College.

Otherwise, the use of the words MOHAWK COLLEGE and related logos on promotional materials is standardized and regulated by the department responsible for marketing and communications. Any questions regarding protocol for using the words MOHAWK COLLEGE or related logos for promotional purposes should be referred to this department.

Unless prior written consent has been obtained from the department responsible for marketing and communications, the words MOHAWK COLLEGE and related logos (or any other official mark or trademark owned by the College), may not be used (a) in conjunction with any private or commercial enterprise; (b) in conjunction with the advertisement of any product; or (c) by any individual or group to promote itself.

6.11 Dispute Resolution

The Office of the General Counsel and Corporate Secretary and Vice President, Academic will be responsible for addressing any questions or conflicts arising from the application, interpretation, and implementation of this policy.

In general, conflicts are best dealt with at an informal level by the Creators themselves, with or without someone from the Office of the General Counsel and Corporate Secretary or Vice President, Academic acting as a mediator. If a conflict cannot be resolved informally, the matter may be submitted to the General Counsel and Corporate Secretary or Vice President, Academic for an administrative decision. The process and procedures by which the General Counsel and Corporate Secretary and Vice President, Academic will arrive at a decision will be determined by the General Counsel and Corporate Secretary and Vice President, Academic depending on the circumstances of the conflict and in accordance with the principles of natural justice and administrative fairness.

7. Policy Revision Date

7.1 Revision Date

March 2028

7.2 Responsibility

The General Counsel and Corporate Secretary and Vice President, Academic will review this policy every five years or earlier when required.

8. Attachments

Attachment 1 - Intellectual Property Disclosure Form

9. Specific Links

In compiling this policy, the College has referenced Intellectual Property Policies developed by other institutions including, but not limited to, George Brown College, Humber College, The University of Waterloo, The University of British Columbia and Simon Fraser University.

The following websites contain more information on Intellectual Property:

1. Copyright Act of Canada; http://laws-lois.justice.gc.ca/eng/acts/C-42/

2. Association of Canadian Community Colleges; Intellectual Property Toolkit; http://www.accc.ca/xp/index.php/en/agreement-types [update link to: https://www.collegesinstitutes.ca/resources/ip-toolkit/agreement-types/… ]

3. NSERC; http://www.nserc-crsng.gc.ca/NSERC-CRSNG/Policies-Politiques/ip-pi_eng…

4. “Universities and Regional Economic Development: The Entrepreneurial University of Waterloo”; by Allison Bramwell and David Wolfe, Munk Centre for International Studies, University of Toronto, June 2005; www.utoronto.ca/progris

8. “Intellectual Property in the 21st Century”; by Ruth Corbin, PhD, LLM for the Conference Board of Canada, February 2000; http://www.conferenceboard.ca

9. Industry Canada webpage on Canada’s New Intellectual Property Strategy which also links to comments received, including those from Universities Canada: https://www.ic.gc.ca/eic/site/693.nsf/eng/00157.html