Intellectual property at UNB
Technology transfer steps
Intellectual Property Disclosure to ORS
Basic and applied research at UNB may result in IP for licensing and/or commercialization. This applies particularly to discoveries that result from industry-related research projects. Obtaining a disclosure of IP is the first step in UNB’s technology transfer process. This disclosure will not constitute a public disclosure and hence will not affect patentability. Follow this link to forms to obtain a copy of the Invention Disclosure Form.
Assessments
Based on the IP disclosure, initial patent and literature searches are undertaken for qualifying inventions. Where searches have yielded positive results, preliminary technical and market assessments are performed to gather information relevant to the prospects for licensing and commercialization of the IP. This information is then summarized in a report prepared by UNB and is then used to make a decision on whether to:
- Proceed with a technology transfer/commercialization project;
- Defer decision if the IP shows promise but the assessments indicate the need for further work by the researcher(s); or,
- Not proceed with a technology transfer project.
Assignment Agreement
If the results of the initial assessments are positive and UNB and the researchers wish to undertake a technology transfer project, the first step is to sign an assignment agreement between UNB and the researcher(s), transferring ownership of the IP rights to UNB. The assignment obligates UNB to share the proceeds from licensing and commercialization with the researchers. Under the agreement, UNB faculty members retain rights to use the assigned IP for research and educational purposes.
Intellectual Property Management Plan
An IP management plan is developed with input from the researcher(s) and describes all of the elements of the licensing strategy. The plan includes sections on the objectives, markets, IP protection, valuation, communication, partners/resources, grant applications/proposals, and model agreements to be used.
Intellectual Property Protection
UNB works with a number of patent agents and attorneys who have expertise in various disciplines. Trademarks, patents, copyrights, and various kinds of contractual arrangements all serve to protect IP. Where a decision has been made to proceed with patent protection, UNB often files first in the United States. This provides for an option to file in Canada and other countries within a year of the initial filing date.
Communications
Communicating IP opportunities is done using both general and targeted methods. UNB prepares an IP profile for use in both methods. This profile presents non-confidential information about the IP, its stage of development, the researcher(s) and the opportunity. The general method involves publication of these profiles on the UNB website as well as on a number of on-line technology listing services, such as Flintbox.
Targeted methods may include directly contacting the potential licensees identified in the market assessment, or contacting local entrepreneurs who may have an interest in forming a start-up company to commercialize the IP. The wishes of the researcher(s) will determine how and to whom UNB communicates an IP opportunity.
Discussions and Negotiations
The negotiation process begins with initial meetings and/or correspondence by the parties about the licensing opportunity. The next step is the signature of a non-disclosure agreement between UNB and the other parties to allow for confidential and more detailed discussions. An option agreement may be signed for consideration, providing the other party with a right to negotiate a license agreement during a defined option period.
Upon completion of the due diligence, or nearing the end of the option period, the other party will normally deliver a preliminary business plan either as part of an initial license proposal or as part of a proposal for seed financing. Based on this document, the major terms of the licensing transaction are determined. Presuming agreement on these terms, the parties will prepare, negotiate, and sign a license agreement. Where a start-up company is being formed, this stage may also involve the drafting of a shareholders agreement, articles of incorporation, certificates of registration, board resolutions, or other documentation.
License Agreement
The license agreement formalizes the transfer of IP rights from UNB to the licensee. The IP described in the license typically falls under one or more patents. It may also include know-how, trademarks, and copyrighted material. The license agreement may be exclusive, sole, or non-exclusive, and it may be granted for one or more fields of use and for one or more territories. Consideration under the license may include fees, royalties, research project funding, equity, etc.
License Revenue and Research Funding
License revenue may include fees, royalties, equity or other financial consideration provided to UNB under the license agreement(s). As the party responsible for administration of the license agreement(s), UNB ensures that payments are provided to UNB when due and are properly distributed to researcher(s). Where there is more than one researcher, the percentage division between them is decided by mutual agreement.
