Who Owns IP at UVic?
At UVic, the creator typically owns IP with an obligation to share benefits with UVic. In some situations, IP may not be creator owned, including when:
- The regulations of the sponsor of grant or contract research require different IP ownership provisions.
- The University and University member have entered into a written agreement to share ownership of the IP.
- The IP comprises course materials that are being commercialized; in which case, the University and the creator will have 50:50 ownership.
- The IP is the result of a written agreement with a University member or a contract for services; in which case, the University shall retain ownership rights and control of the IP. This clause shall not apply to any undergraduate or graduate student where the work is part of their progress toward meeting their degree requirements.
Who is an inventor?
For the purpose of determining who is an inventor, only a person’s role in the conception (idea) stage is considered. Each person who makes an original and substantive contribution to conceiving the thing ultimately invented or one of its essential elements is legally entitled to be named as an inventor. An inventor is one who formulates and describes the means of making the thing ultimately invented.
A person will not be considered an inventor, if he or she merely:
- Suggested or thought about an idea or end result or posed the question to be solved, but did not also come up with the actual way of implementing the idea, achieving the end result or solving the problem;
- Contributed an obvious, rather than an original and substantive, element of the invention;
- Was involved in testing or reducing someone else’s idea into practice;
- Suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual invention;
- Followed instructions of those who conceived the end result or solution;
- Is the department head, supervisor or head of the laboratory where the invention was developed, but did not contribute directly and substantially to the inventive process; or
- Provided funding for the research, equipment or laboratory where the invention was created.
Inventorship is also different than authorship. A person may be an author or co-author of a publication describing an invention, but will not be considered a co-inventor unless he or she made an independent conceptual contribution to the invention.
Who qualifies as a joint or co-inventor?
An invention may have more than one inventor. To qualify as a joint or co-inventor, you must have made an independent, conceptual contribution to an invention or one of its essential elements. The contribution must be substantial and one that makes a difference in the essence, use, application or production of the invention.
Joint or co-inventorship requires some form of communication between the inventors. It is not necessary, however, that they physically work together or for the ideas to have occurred to the co-inventors at the same time. Rather the invention is the result of collaboration, each co-inventor contributing in an original substantive way to conceiving that which is ultimately invented.