Exploitation of Research Results and Technology Transfer

An inventor is a person (professor, researcher, employee, postdoctoral fellow, student) who has an original idea or who contributes intellectually to the execution of an original idea that is the subject of the claims contained in a patent.

Thus, a person who works under the direction of another person and whose work consists of validating an invention (no intellectual contribution to the original idea) is not and should not be considered one of the inventors.

A university invention belongs to the inventors, the university and the CHUM. The distribution of the percentages of each person’s contribution to the invention is generally the result of discussion among the inventors.

It often happens that an invention is the result of an inter-institutional collaboration. In such cases, each inventor must declare the invention to their establishment.

However, and in order to avoid doing extra work unnecessarily, contact the CRCHUM’s Technology Transfer Office, because certain institutions accept a simple copy of the declaration of invention made at the CRCHUM and vice versa.

When it receives an invention developed at different establishments, the team at the Technology Transfer Office will contact the other establishments involved to check whether they have received a copy of the declaration of invention. 

The CHUM’s “Regulation Regarding the Intellectual Property of Research Results” stipulates that “the researcher shall, henceforth and upon request, promptly assign to the establishment or to any person appointed by the establishment all rights they have in an institutional product in return for the benefits stipulated in this regulation” (article 4.7).

This approach does not affect the person’s status as an inventor, nor the share of eventual revenue that they may agree to, but rather allows the CHUM to undertake the steps involved in exploiting the research results on behalf of the inventors and to negotiate the transfer of technology with full authority.

The primary criterion on which a patent application is analyzed is novelty. Most industrialized countries subscribe to the policy of absolute novelty.

Thus, no patent can be obtained if the invention has been made public, in any way whatsoever, anywhere in the world.

However, Canada and the United States make an exception by allowing a grace period of one year from the date of publication to file a patent application.

Any publication in a journal or scientific journal or on a website, including abstracts disseminated for a science symposium (e.g., the CRCHUM’s Scientific Day), previews of articles or doctoral dissertations are examples of public disclosure.

Disclosing information to colleagues in the university setting may or may not be considered confidential, depending on the agreement between the parties. Disclosure will be considered confidential when, at the time of the disclosure, the party receiving the information understands that they are required not to reveal anything to anyone and agrees to do so (e.g.: grant proposal, confidentiality agreement).  

With respect to thesis defences, it is common practice to sign a confidential disclosure agreement when defending a thesis. A student’s thesis may also be kept confidential long enough to allow them to file a patent application.

When in doubt, talk to the Technology Transfer Office beforehand to find out what steps to take. 

NO, but different agreements exist, the main one being the Patent Cooperation Treaty (PCT), which allows the filing of a patent application at a single place, according to a single set of requirements. Under the PCT, it is possible to extend the patent application to various selected countries. After approval in each of the countries selected, the applicant receives several national patents. 

The bulk of the inventor’s work (after creating the invention!) lies in writing the declaration of invention, which must be thorough, precise and accurate, as well as the main elements of the patent application, and in the preparation of the provisional and complete patent applications.  

The inventor must then collaborate with the Technology Transfer Office and Axelys, a non-profit organization responsible for the management of intellectual property and the exploitation of research results in Quebec, in order to better their odds of achieving successful technology transfer. In fact, their expertise in their field helps present the invention in a better light to potential industry partners. They are therefore involved at every critical step of the process.

When the CRCHUM decides to exploit research results, it is responsible for the expenses involved in the assessment, protection and transfer of the technology. In certain cases, the CRCHUM will reimburse itself for expenses incurred from the first proceeds of the commercial exploitation of the invention before distributing the net proceeds.

Axelys is a non-profit organization whose role is to offer consulting and support services in development, intellectual property management and innovation transfer to all public research establishments in all regions of Quebec.

It can also help create spin-off science-based businesses resulting from public research. Thus, Axelys is an important partner for the CRCHUM in exploiting research results.