A UNB inventor is anyone affiliated with UNB (i.e. full-time or part-time faculty, staff, graduate or undergraduate student, post-doctoral fellow, etc.) who invents something using UNB resources.
Although there are exceptions, UNB has an inventor-owned intellectual property policy. This means that the UNB inventor has the choice to pursue commercialization themselves, or assign their invention to UNB in return for commercialization assistance.
If a UNB faculty member chooses to pursue commercialization themselves, they have an obligation to disclose the invention to the Vice President Academic or Vice President Saint John as part of the Collective Agreement [Article 38.04(b)].
The Office of Research Services (ORS) will however be the first point of contact, as it handles the disclosure process. When intellectual property has been developed with the use of UNB resources over and above normal resources, the inventor will enter into an intellectual property agreement with UNB specifying the sharing of net proceeds based on relative contribution.
For all UNB inventors, if the invention was created as using external funding (grant or contract) there may be other intellectual property ownership scenarios that will need to be respected. UNB inventors should contact ORS prior to pursing commercialization activities
When a UNB inventor assigns their invention to UNB, they benefit greatly from ORS’s marketing, intellectual property and licensing expertise. UNB inventors often participate in discussions with the company regarding the [technical aspects of the] invention; however, they generally do not participate directly in the negotiations of licensing agreements. In any case, they are kept up-to-date throughout the licensing process.
UNB does not give special treatment to inventor-owned start-ups. However, ORS does work closely with the UNB inventor in evaluating potential markets and licensees. UNB recognizes the need to involve the inventor in the licensing of their invention and strives to keep their best wishes in mind. When fielding potential partners, the best licensee is chosen based on their ability to commercialize the invention, whether it may be the UNB inventor’s start-up or another company.
An option agreement provides a company limited access to an invention for a set period of time. Options are typically used in situations where the company would like to do further research to evaluate the invention prior to entering into a full license agreement.
Option agreements are sometimes preferred by start-ups so they can explore funding opportunities and raise capital. ORS provides options on a case-by-case basis.
A license agreement for a UNB invention can be negotiated after due diligence is completed by ORS, in terms of a market and commercialization assessment, and the invention has been assigned to UNB. If a start-up is the ideal choice for commercialization then ORS will negotiate a license agreement with the company.
The time it takes to obtain a license varies depending on the invention, whether a patent is being pursued and the interest of other parties. It may take several months after the invention is disclosed and assigned to ORS for it to be fully evaluated [and for a patent to be filed, if applicable] to allow the negotiation process to begin.
These processes can be streamlined if the UNB inventor contributes to preliminary assessments of the invention; such as providing information on potential markets, potential licensees, patent claims, etc. Start-ups can take this time to develop the business to increase their viability as a potential licensee. Once ORS identifies the best licensee, whether it be a start-up or existing company, negotiations for a license agreement may take anywhere from several weeks to several months.
Yes, in this case, a license is negotiated with ORS.
UNB can, but does not as a standard practice, take a minority equity stake in a company as part of a license agreement. This is typically done with start-ups to help free up some of their limited cash flow, helping to sustain and grow the business. Negotiating an equity share is done on a case-by-case basis.
Yes, being incorporated is not necessary for a company to obtain a license. However, an agreement must be with a company, not an individual, and must have a valid name, place of business, and business insurance.
UNB maintains the ability to use and continue to work on UNB inventions that are licensed to companies for non-commercial research, education, and administrative purposes.
A company may have, as part of their license, the right of first refusal to obtain a license on results of further research done on the invention.
If a UNB inventor wishes to disclose or discuss their invention before a patent has been filed or publication released, a non-disclosure agreement (NDA) should be in place to ensure confidentiality. An NDA prevents loss of patent rights from inadvertent disclosure. Please contact ORS to have an NDA put in place prior to any discussions.