Commercialization of Intellectual Property Policy – May 31, 2010

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COMMERCIALIZATION OF INTELLECTUAL

PROPERTY POLICY

Policy Type:

Management

Initially

Approved:

May 31, 2010

Policy

Sponsor:

Provost and Vice-

President,

Academic

Last

Revised:

May 31, 2010

Primary

Contact:

AVP, Research,

Scholarship and

Community

Engagement

Review

Scheduled:

April 1, 2025

Approver:

Board of Governors

OVERVIEW

Mount Royal’s research mission differs fundamentally from those of research-intensive universities.

Our focus on teaching and learning leads to an overall valuation of research that pays particular

attention to its impact on learning. In most Faculties, the potential for commercialization of research

products is not a criteria for evaluation, and therefore, the institutional focus is not specifically on

commercialization or revenue generation.

As Mount Royal relies primarily on public funds and manages a variety of such funds for research

purposes, we have a responsibility to prioritize public benefit over private and to steward public

funds responsibly. Therefore, when Commercialization of research results becomes a possibility,

the University seeks to both recover the money invested and provide a revenue stream in a manner

that underlines our mission and discourages the use of public funds as venture capital.

PURPOSE

To clearly define the obligations of Intellectual Property Creators and the University in regards to

the Commercialization of Intellectual Property.

SCOPE

This Policy applies to all Academic Members who develop Intellectual Property (IP) through the

use of Specialized University Resources and wish to engage in Commercialization of that IP.

POLICY STATEMENT

GENERAL

1.1.

The Creator(s) of Intellectual Property have the exclusive authority to decide

whether to pursue Commercialization of their IP.

1.2.

When Creator(s) elect to Commercialize the IP, they assume responsibility for

legally protecting and marketing it, finding a licensee, buyer or partner, negotiating

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an agreement with such third party, and administering that agreement. Any such

agreement must contain full and complete releases and indemnification in favour

of the University, with respect to the commercialized Intellectual Property.

Concurrently with entering into any type of agreement whereby the Creator(s) will

earn revenue, the Creator(s) shall enter into an agreement with the University,

which shall establish the University’s share of the Gross Revenue generated by

such commercialization. At minimum, the Creator(s) will pay the University at least

10% of Gross Revenues arising from the Intellectual Property, on an annual basis.

The University shall provide the Creator(s) with a template agreement that will form

the basis for the contractual arrangement between the University and the

Creator(s).

1.3.

Any such Intellectual Property is further subject to the license and other rights of

the University under the Intellectual Property Policy.

1.4.

In exceptional circumstances where the Creator makes a clear case that payment

of 10% of Gross Revenues would considerably reduce the viability of the

Commercialization activity, the Board of Governors of Mount Royal University may

consider modifications to this percentage.

1.5.

Where the Academic Member and the University are co-owners of an IP and where

the University has not waived its ownership rights, then the University’s Provost

and Vice-President, Academic or designate shall represent the University’s

interest in all matters related to this IP, including but not limited to patents, sale,

licensing or any other Commercialization activity.

1.6

The University is not responsible for any legal, development, marketing and other

costs the Creator(s) may incur, including patent prosecutions.

TIMELY DISCLOSURE

2.1

Academic Members who have developed Intellectual Property that they intend to

Commercialize must inform the Associate Vice-President Research, Scholarship

and Community Engagement in advance, in writing, and in a timely way of their

intentions. Such disclosure must include the nature of the IP, the names of all co-

creators, the source of funding for the research project out of which the IP

emerged, and any other information requested by the University. This disclosure

shall remain confidential.

2.2

At the time of disclosure the determination of what constitutes Specialized

University Resources in a particular context shall be made, in writing, and signed

by the Creator and the Dean/Director of the relevant Faculty/Unit. Otherwise, the

Dean/Director shall make the determination.

3.3

Any resulting revenue sharing agreements will be disclosed by the Associate Vice-

President, Research, Scholarship and Community Engagement in a confidential

report to the Board of Governors on a quarterly basis.

DEFINITIONS

In this Policy, the following terms, when capitalized, shall have the following meanings:

(1)

Academic Members: shall include full-time and part-time instructors teaching credit

courses, any other person teaching a credit course,

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counsellors, educational developers, librarians, those persons

from time to time designated “Academic Members” by the

Board, and any other person teaching non-credit courses. It

shall also include teaching assistants, post-doctoral fellows,

research fellows, undergraduates and other students.

(2)

Board/Board of

Governors:

means the Board of Governors of Mount Royal University

(3)

Commercialization: shall mean activities undertaken in order to exploit Intellectual

Property. Commercialization includes assignment, licensing,

manufacturing or production of Intellectual Property with the

goal of financial return

(4)

Creator:

shall mean the person or persons who create Intellectual

Property

(5)

Gross Revenue:

shall mean the proceeds from the sale, lease, transfer,

assignment, license, grant of right of access, or other

conveyance or grant of rights in respect of intellectual property

or intellectual property rights therein, including without

limitation, any license issue fees, option fees, royalties, and

equity interests, except that any equity interests, or portion

thereof received by the University shall not be included in

“Gross Revenue” unless and until such time as the equity

interests, or portion thereof, are sold by the University. The

gross revenue in a transaction between affiliated parties, or

any parties that are otherwise associated with each other or

acting in concert, or in any other non-arm’s length transaction,

will be the greater of: (i) the actual amount paid, and (ii) the

amount that would have been paid in a similar transaction at

arm’s length.

(6)

Intellectual Property

or IP:

shall mean any result of intellectual or artistic activity created

by a person, that can be owned by that person including but

not limited to: works, data, inventions, ideas, patents, patent

applications, industrial designs, trade-marks, trade names,

domain names, integrated circuit topographies, plant varieties,

computer programs, circuits, biological material, chemical or

other compositions of matter, know-how, confidential

information and trade secrets, which can be registered or

otherwise protected under the law.

(7)

Policy:

means the Commercialization of Intellectual Property Policy

(8)

Specialized

University

Resources:

shall mean University Resources that would not normally be

utilized by the individual in the normal course of duties and

would require University funding either directly or indirectly.

Examples include, but are not limited to, MRU funded grants

for the project in excess of $10,000, scientific instrumentation,

specialized library resources or personnel, additional teaching

release for faculty, or the use of research labs. External

funding may be included, depending on the nature of the

contract, awards agreement, or funding agency policy.

Examples of resources that do not apply include the portion of

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a standard faculty workload dedicated to research, use of an

office computer, or hiring research assistants using grant

funds. The determination of what constitutes Specialized

University Resources in a particular context shall be made, in

writing, at the outset of commercialization activities, and

signed by the Creator and the Dean/Director of the relevant

Faculty/Unit. Otherwise, the Dean/Director shall make the

determination. Such a determination is subject to the dispute

resolution process set out in the Intellectual Property

Procedures.

(9)

University:

means Mount Royal University

(10)

University

Resources:

shall include the use of University funds, University staff,

facilities, equipment, materials, technological information, or

proprietary know-how.

RELATED POLICIES

•

Intellectual Property Policy

RELATED DOCUMENTS

•

Intellectual Property Procedures

REVISION HISTORY

Date

(mm/dd/yyyy)

Description of

Change

Sections

Person who

Entered Revision

(Position Title)

Person who

Authorized

Revision

(Position Title)

05/31/2010

NEW

01/22/2020

Editorial

Template Update

Policy Specialist

University Secretary