TRIUMF PATENT PLAN 1. General (a) (b) The purpose of the TRIUMF Patent Plan, hereafter called the "Plan", is to stimulate innovation and invention, to encourage public use and commercial application of invention and, while doing so, to protect the rights of the inventor and TRIUMF. TRIUMF staff and users are encouraged to discuss and publish the results of research as soon and as fully as may be reasonable and possible. However, public use and commercial application are frequently facilitated by patenting arrangements. TRIUMF expects to participate equitably in the proceeds of inventions derived from the use of its facilities and/or expertise. This Plan shall be administered on the following basis: (i) All persons employed by a member or associate member university of TRIUMF whose primary place of work is at the TRIUMF facility and whose salary is funded by the National Research Council, shall be subject to this Plan. Hereafter, these persons will be referred to as "TRIUMF staff". (ii) For all other users of TRIUMF from one of the member or associate member Universities, patent rights shall be determined by the patent policy of that University. For TRIUMF related discoveries, where a scientist on the faculty of one of the participating universities is the inventor, royalties after cost recoveries are to be divided 50% to the inventor, 25% to the university and 25% to TRIUMF. (iii) Visitors to TRIUMF, other than those of the member and associate member universities, shall be subject to TRIUMF policy on the same basis as TRIUMF staff, unless previous agreement to the contrary was reached with the visitor's employer or, if the visitor is selfemployed, with the visitor. (iv) When a patentable invention is submitted jointly by a member of TRIUMF staff, as defined in b(i) above, and a member or member(s) of an institution other than TRIUMF, the two institutions shall cooperate in determining which institution will pursue the patenting and licensing of the invention, and how the patenting costs and royalties will be shared among them. (c) The staff of the Technology Transfer Office, under the direction of the Division Head of Technology Transfer (collectively the Technology Transfer Professionals), shall review all patentable and licensable intellectual property based on standard procedures/processes. The Technology Transfer Professionals will decide on the best course of action and/or seek direction from the Board of Management s Technology - 1 -
Transfer Sub-Committee on an as required basis, for the development and/or disposal of such patentable and licensable intellectual property. 2. Objectives (a) All rights to an invention created or discovered in whole or in part by any member of the TRIUMF staff shall belong to TRIUMF unless TRIUMF makes a written agreement to the contrary with, or grants a waiver in favour of, that member of the TRIUMF staff. Each member of the TRIUMF staff involved in creating or making an invention which may be patentable, which may be of benefit to the public or which may have commercial application, will keep the Division Head of Technology Transfer informed in a timely way of all developments in connection with the invention, will execute at the expense of TRIUMF an assignment of all rights in the invention and such other assurances as TRIUMF may reasonably request, and will be entitled to royalties from the invention in accordance with Section 5 of this Plan. If TRIUMF does not exploit the invention on a commercial basis, then unless TRIUMF has decided not to exploit the invention because in its absolute discretion it considers development or exploitation of the invention to be contrary to the public interest, TRIUMF shall, at the request of that member of the TRIUMF staff, reassign the rights of TRIUMF to the invention to that staff member, subject to the rights in the invention granted to others and to any agreements made with respect to the invention, provided that the member of the TRIUMF staff expressly agrees to release TRIUMF from any claims by the member in respect of the invention and expressly assume all obligations of TRIUMF in respect of the invention and provided that all others with rights in the invention or who are parties to such agreements also release TRIUMF from all claims related to the invention or such agreements. (b) For the purpose of this Plan, invention property includes any invention, patents, databases, computer software, data, designs, technical reports, and all other products of research, which may be licensable. Where it is anticipated that inventions or discoveries may ensue from a particular research enterprise, it may be necessary to undertake special agreements concerning patent or licensing rights before the research funds are accepted for administration by TRIUMF. 3. Procedures (a) Any TRIUMF staff member who decides to patent an invention must complete a TRIUMF Invention Disclosure Form (Appendix I to this Plan), providing a full description of the invention, and submit this to the Technology Transfer Office. (b) The professionals in the Technology Transfer Office, with the assistance of such expertise as is considered required, will decide on the best course of action for proceeding with the - 2 -
development and legal protection as described in section 4 below. (c) If TRIUMF decides to proceed, the professionals in the Technology Transfer Office will consult with the inventor(s) on the proposed patenting arrangement. (d) A formal agreement will be drawn up for signature by TRIUMF and the inventor(s) formalizing the disposal of the invention by which the inventor(s) will assign interest in the invention to TRIUMF. (e) The cooperation of the inventor(s) in the development and marketing of the invention is critical. The inventor(s) will assist in ensuring that written descriptions and patent filing are complete and accurate, and will sign necessary legal instruments from time to time relating to the filing and maintenance of patents and the development of inventions. If the inventor does not comply with this provision, TRIUMF reserves the right to withhold payments of royalties. 4. Patent and Licensing Alternatives As described in section 3, inventions must be submitted in accordance with the TRIUMF Patent Plan. If TRIUMF elects to proceed with legal protection, outside agents or lawyers will be retained by TRIUMF to perform the required patent applications, copyright and trademark registrations, etc. With consideration of how to best facilitate public use and commercial application, TRIUMF may choose to: (i) (ii) (iii) Undertake direct licensing arrangements with suitable manufacturers, distributors or users; Use the services of invention licensing agents or brokers; Submit the proposal to a patenting corporation, which has experience in evaluating inventions and obtaining patents on them and which has the capability and facilities for introducing inventions and patents to public use. TRIUMF will normally prefer to retain patent rights and to grant non-exclusive licenses at reasonably negotiated rates. In some circumstances, TRIUMF may assign patents retaining rights of first refusal on reassignment, or may grant exclusive or non-exclusive rights for limited periods, or may make other such arrangements as may seem appropriate to facilitate technology transfer while protecting the rights of TRIUMF. - 3 -
5. Royalties to Inventor(s) (a) (b) (c) Income derived from the sale or other disposal by TRIUMF of inventions or discoveries, including that derived under the terms of agreements with patenting corporations, will be distributed such that the inventor(s) will receive 50% of the net income and TRIUMF will retain 50% of the net income, subject to Section 1 (b)(ii). Net income will be calculated as gross income less direct costs. Direct costs are defined as the disbursement of TRIUMF funds in connection with obtaining and maintaining a patent and/or licensing agreement. When there is more than one inventor of an invention, the portion of net income payable to the inventors will be paid to the inventors jointly unless a written agreement between or among them to the contrary is delivered to TRIUMF, in which event that portion of the net income will be paid to the inventors separately in their respective proportions as set out in the agreement, for the duration of the agreement or until a revised written agreement between or among the inventors is delivered to TRIUMF. An Accounting will be made to the inventor(s) from time to time but not less frequently than annually. Revenues received by TRIUMF under these provisions will be allocated at the discretion of the Board of Management. 6. Communication of Information No person or institution that is subject to this Plan shall communicate any details of an invention in which TRIUMF has any rights under this Plan, or the process leading to that invention, unless the Division Head of Technology Transfer or his/her designate approves the communication in writing, in which event the communication may only be made on the terms set out in the approval. 7. Record Keeping If an invention might arise in the course of work on any project in which a member of the TRIUMF staff is participating, then as a routine procedure the member or members of the TRIUMF staff who participate shall be responsible for the maintenance and safekeeping of records of the project which are to be dated, signed and witnessed by those working on the project. Such records shall be kept in a bound (not loose-leaf) form. 8. Other Employees A member of TRIUMF staff responsible for work, which might give rise to a patentable invention, should ensure that no one associated or familiar with the material involved releases - 4 -
any unauthorized information. If appropriate, those associated with such a project may be asked to sign a brief non-disclosure agreement to this effect. 9. Arbitration In the event of there being a dispute between TRIUMF and the inventor(s) and/or TRIUMF and the universities as to their respective rights, such disputes shall be determined by arbitration under the provision of the Arbitration Act of British Columbia. - 5 -
APPENDIX I Technology Title/Technology TRIUMF Detailed Invention Disclosure Form Restricted and Confidential Information Disclosure Date Conception Date Inventor(s), Name and Title Home Mailing Address 1. What is the invention? (Detailed Description) Is this invention a new process, composition of matter, a device or one of more products? A new use of, or an improvement to, and existing product or process? Use additional sheets to elaborate or attach descriptive materials/diagrams. Please enclose sketches, drawings, photographs and other materials that help illustrate the description. (Rough artwork, flow sheets, Polaroid photographs and penciled graphs are satisfactory as long as they tell a clear and understandable story. 2. From the description, pick out and expand on novel and unusual features. How does the invention differ from present technology? What problems does it solve, or what advantages does it possess? 3. Has the apparatus, product, or process been made or tested? If yes, does a sample or model of your proposal exist? If so, would it be preserved and made available for demonstration if proprietary protection is sought? 4. Are records and data available? Give reference numbers and physical location, but do not enclose. Papers Drawings Photographs Graphs Flow Charts - 6 -
Performance Charts Prototypes Reports Grant Application 5. Describe existing documentation material that supports this invention (theses, reports, preprints, reprints, etc.). Please list publication dates and attach copies insofar as possible. Include manuscripts for publication (submitted or not), news releases, feature articles and items from internal publications. 6. Why does the inventor think the invention has commercial potential? 7. What does the inventor see as the commercial application(s) of the invention? In addition to immediate applications, are there any other uses that might be realized in the future? 8. Any commercial interest shown at this stage? Name companies and specific persons if possible. 9. Has there been public disclosure of the invention? Please list date, place and circumstance of public disclosure. 10. Are there plans to publish? Is there a meeting of learned society or deadline or publication of a scientific journal in the next six (6) months at which you want to make a disclosure? If so, when and where? 11. How has this invention been funded to date? (Identify specific grants, if applicable) 12. Are there any IP obligations associated with this invention or research? 13. Are related patents or other publications known to the inventor? Please list. - 7 -
14. Are there any potential weaknesses or disadvantages regarding this invention? Can they be overcome? How? 15. What does the inventor see as the greatest obstacle to commercialization? 16. What further research or development is required to make the invention market ready? (Time, $ and other Resources) 17. How does the inventor want to proceed with the invention? 18. Time line of the invention Inventor(s) Name and Title Inventor(s) Signature, Date - 8 -