DISCLOSING YOUR INVENTION
Who should disclose their IP to UVic Industry Partnerships?
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 Instructor
• Limited Term appointment with a term of more than one year
• Artist-in-Residence
• Lecturer
• adjunct professors and honorary professors
• librarians holding a Regular Librarian appointment (regular or confirmed) or Limited Term appointment as a Librarian and includes an Archivist
• graduate and undergraduate students, and
• 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 to disclose to UVic Industry Partnerships
UVic Industry Partnerships encourages an early disclosure of new inventions in order to prevent inadvertent public disclosures of your invention which could hinder or even prevent any patenting protection for your IP.
Although the official disclosure requirement for commercially viable IP is 3 months from creation, UVic Industry Partnerships encourages disclosure even while you are still in the process of developing the innovation. This will allow UVic Industry Partnerships staff to work with you on all the options for successful knowledge transfer, including the development of long-term industrial partnerships.
Excerpt from Policy 1180
“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.”
Public Disclosure
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.