Intellectual Property

Copyright protects original literary, musical, dramatic or artistic works in a variety of forms, including written materials, computer software, and web-based formats. Copyright is the exclusive right of the creator, or subsequent copyright holder, to reproduce a work.

Copyright protects the expression of an idea rather than the idea itself. It exists automatically as soon as an original artistic, literary or musical work or software is created. Consequently registration at the Copyright Office is purely voluntary; failure to register will not affect the validity of the copyright. It is advisable, however, to put the public on notice that the creator is claiming copyright by marking all copies of the work with a copyright notice (© [author’s name], [year of publication]).

Example: © The University of British Columbia, 2021

The creator of an original work also has moral rights, which include the right to protect the integrity of the work, even if it has been commissioned by or sold to another. For example, the act of tying ribbons around the necks of 60 Canada geese forming a sculpture in the Toronto Eaton Centre was found to be a violation of the sculptor’s moral rights. Moral rights may also include the right to be known as the work’s author or creator. The creator may not assign moral rights to another, but may waive them.

Copyright protection in Canada lasts for the life of the author plus 50 years. Moral rights last for the same term as the copyright. Copyright extends to other countries by virtue of treaties, such as the Berne Convention and Universal Copyright Convention. The term of protection in another country depends on that country’s national law.

Patents protect new inventions, such as new or improved materials, products or processes. In order to be patentable, an invention must be novel, useful, and not obvious to a person skilled in the field of the invention.

Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these, such as new uses of known compounds, are patentable subject matter. Novel genetically engineered life forms and new microbial life forms can be patented in some jurisdictions, such as the United States, but not in others (including Canada). Methods of medical treatment are also patentable in some jurisdictions, such as the United States, but not in others, including Canada.

Scientific theorems or principles, mere ideas, methods of doing business or of playing games, as well as anything that is illegal or illicit, are not patentable. Patent rights do not arise automatically. Rather in exchange for complete disclosure of an invention, the national government grants the patent owner the exclusive right to make, use or sell the invention for a limited period of time. Patents generally have a life of 20 years from the date the patent application was filed.

If, as part of your employment duties, you create something not otherwise considered scholarly work, your employer normally owns the copyright in the resulting work. So if the University hires you to carry out an administrative project, such as creating a web page, you cannot claim authorship or copyright in the resulting work.

Often there is a difference, however, between work created for the University by a University employee and work created for the University by a consultant or independent contractor. For example, if a graphic designer is hired as a consultant to design a poster for the University, the graphic designer will own the copyright in the poster, unless the consulting agreement specifically assigns the copyright to the University. If, on the other hand, a University employee designed the poster as part of his or her employment duties, the copyright over the poster would automatically belong to the University.

Similarly, if the University hires an engineering firm to prepare a report on the University drainage system, copyright over the report belongs to the engineering firm. However, the University would own the copyright in a similar report prepared by an engineer employed by the University. But if the work is created outside the scope of a person’s employment duties, authorship and copyright normally belong to the creator rather than the University.

The situation becomes more complicated, however, where individuals associated with the University “wear several hats”. A graduate student carrying out thesis research may also be a teaching assistant (and thus an employee of the University) and a collaborator on his or her supervisor’s research project funded by a private sponsor.

In each role, your ability to claim authorship, inventorship or other intellectual property rights depends on what function or activity you are performing, rather than on your status. Scholarly work is generally entitled to some form of credit but pure administrative or general work as an employee is not.

Working Independently

Some companies and individuals work independently at the University. If they simply rent space and are not otherwise using materials or equipment provided by the University, generally the University has no claim to intellectual property rights over the resulting work. If the University administered their funds or otherwise provided materials, laboratories or equipment that allowed them to carry on work, the University claims an interest in the resulting work. Check the terms of any collective agreement or employment contract that applies to your employment relationship. You may also require specific advice about your intellectual property rights if you carry out multiple functions at the University.

While faculty, staff, students and anyone connected with the University are encouraged to discuss and publish the results of research as soon and as fully as is reasonably possible, care must be taken not to disclose the details of something that may be patentable. Publication of the details of an invention may make it impossible to seek patent protection.

Thus, there is urgency for researchers and scholars to recognize and address the possibility of commercial value early in the process of their work. Where it is anticipated that inventions or discoveries may result from a particular research enterprise, it may be necessary to have special agreements clarifying patent or licensing rights before the sponsor’s research funds are accepted by the University.

If an invention or discovery (including audio-visual and computer materials) was developed using University facilities or funds administered by the University, any person connected with the University who proposes to protect or license it must disclose the details of and assign the rights over the invention or discovery to the University. The University may decide to protect or license the discovery or invention, in return for a share of any proceeds that arise from its sale or commercialization.

The University and inventors each receive 50% of the net income (gross income less direct costs) from the commercialization of University owned intellectual property. If the University decides not to protect or license, the rights may be reassigned to the inventor, who may then develop any commercial application of the invention or discovery that he or she sees fit.

The creation of intellectual property in an academic setting often involves input from a number of individuals. The concept for a research project or thesis may originate with a faculty member. Research supervisors also provide tutelage, guidance, and interpretation to graduate students and others involved in a research project or thesis. Students, postdoctoral fellows, research associates, and research technicians may each contribute to the creation and development of intellectual property under the supervision of a faculty member.

Subject to UBC Policy LR11, the rights to the intellectual property created in this way belong to its creators, and the onus lies with the group to agree on the relative individual contributions to the intellectual property. While the rights to University Research Products are owned by the University, it is important to identify all of the creators and have them agree as to the relative contribution they made to the intellectual property. If the group is unable reach agreement, please see Dispute Resolution.

There are additional considerations when the project has been funded by outside sources. In each case, the agreement establishing the project funding must be examined to determine whether the funding body claims any intellectual property or other rights pertaining to discoveries or innovations resulting from the project.

The relationship between funding and intellectual property rights depends on the funding body itself and the specific terms of the project funding agreement. In addition, the University will not accept funding that seeks to impose conditions that do not comply with University policies.

Not all funding bodies are the same. Some public funding bodies, such as the federal granting councils -- the National Research Council of Canada (NSERC), the Canadian Institutes of Health Research (CIHR), and the Social Sciences and Humanities Research Council (SSHRC) -- don’t attach any intellectual property claims to the research they fund.

However, some other organizations and private sector companies do claim intellectual property rights as a condition of their support of University research, fellowships or scholarships. Still other organizations, such as some Networks of Centres of Excellence (NCEs), Forest Renewal BC, charitable associations or foundations, claim either licensing rights or a share of royalties. In order to determine if any conditions apply to the research in which you are involved, be aware of which organization is funding your research and what rights the organization claims in relation to the results of your work.

In 2020-21, over 3,200 projects with a value of approximately $270 million were funded by federal granting councils.

All members of the research project should discuss intellectual property rights before starting the research. Participants should be aware of any restrictions relating to ownership, publication and use of any work (including data or results), and to what extent the work may be used for academic credit. Contracts and grants from the private sector are increasingly common and are encouraged by CIHR, SSHRC and NSERC.

If the work is being conducted under a private sector contract or grant, publication of the work and rights to patents or other forms of intellectual property may be subject to a number of restrictions. At the outset of the project, the professor should disclose these restrictions to the student and the advisory or supervisory committee and determine if the work is suitable for thesis research. In addition, at the outset of your graduate research you should understand the conditions of the scholarship, grant, research sponsor, contract or professor. Please refer to Documenting the Research Relationship.

Intellectual property rights shift when a member of the faculty or a student, post-doctoral fellow, technician, or any other individual connected with the University proposes to protect (through patent or trademark) or commercialize intellectual property that has been developed using University facilities or University administered funds.

UBC Policy LR11 states that in cases where it is advantageous to protect or licence an invention or discovery, an Invention Disclosure must be completed and filed with the Director, University-Industry Liaison Office. This form describes the invention or discovery and confirms assignment of the intellectual property rights to the University. In return, the creators of the intellectual property are assigned a share of any proceeds arising from commercialization. An invention or discovery is broadly defined in Policy LR11 to include any invention or discovery (whether or not patentable); software; and data, information, research tools, biological material and knowhow which is proprietary in nature.

If you believe that you have made an invention, you should review your findings with your supervisor and determine if there are any obligations to a third party, such as the sponsor of the research or a co-inventor of the discovery. Your subsequent actions may be governed by such factors.

You and others involved in the discovery must consider whether you are obligated under University policies or contract with the research sponsor to disclose the invention to the University. In addition you must consider whether you are interested in pursuing commercial development of your discovery. Publication of the discovery prior to filing for patent protection will seriously diminish, if not eliminate, the commercial value of your discovery.

An Invention Disclosure is a written document or online form that describes an invention to the University. Disclosure should be in sufficient detail to:

• identify all of the inventors
• evaluate the scientific and technical merit of the invention
• determine whether and how the invention can be protected
• discuss its potential commercial value and any potential commercial interests
• describe how the research leading to the invention was funded

Invention Disclosure forms and information regarding the invention disclosure, evaluation, and patenting process are available from the University-Industry Liaison Office (UILO). The UILO has been established at the University to provide you with advice and services to facilitate the protection and commercialization of intellectual property.

Rights to senior or first authorship can be difficult to resolve:

• In the humanities the student will often be the only author of the published work that reports on his or her research
• In the social sciences practices vary, often depending on the nature of the thesis research and its relationship to the supervisor’s research program
• In the physical and life sciences students are frequently given first authorship in publications arising from their thesis research

It’s a good idea to discuss authorship with your supervisor early in your working relationship. In the event of a dispute about who is entitled to be credited as a first author, co-author, and/or in what order the author credits should appear, refer to Dispute Resolution for advice.

The fact that a co-worker is not named as an investigator in a grant or contract under which the work was performed should not prevent him or her from receiving credit as a co-author.

However, a prerequisite of co-authorship is work that involves an original contribution, as defined by that discipline. The right to co-authorship may be lost if a co-worker leaves the project or does not contribute substantially to the work. Although acknowledgment may be appropriate in such circumstances, co-authorship rights cannot be assumed.

Normally the supervisor, in consultation with his or her co-authors, will make the decision as to when or whether a co-authored manuscript should be submitted for publication and to which journal. A student considering publication of his or her own paper also has a responsibility to consider the intellectual property and co-authorship rights of any others who may have been involved in the research. You should not be added as an author on a paper without your permission. Similarly, you should obtain permission from others before acknowledging as them co-authors of a work.

It is also important to distinguish inventorship from authorship. As you can see from the information above, there are many factors to consider in determining authorship. According to patent law however, you can only be an inventor if you make an original, inventive and substantive contribution to an invention. (Merely suggesting an idea or an end result is not enough to make you the inventor.)

If you have made the original, inventive and substantive contribution, the law requires that you be named as an inventor on a patent application. All members of a research group regardless of position—professor, graduate student, post-doctorate fellow, technician or otherwise—who contribute in accordance are entitled to credit. If, however, you were employed to do the work that constituted your contribution to the invention, you may be required to assign to your employer any patent rights in the application. You should check the terms of any collective agreement or employment contract that applies to your employment relationship.

Intellectual property rights that you acquire while you are studying or working at the University continue to belong to you even after your connection with the University ends. Intellectual property rights accrue by virtue of your contribution, not your association with the University.

You, your supervisor, and your collaborators should have unrestricted access to all data collected through your collaborative research. Entitlement to ownership of primary data, software, and other products of research can vary according to the circumstances under which research is conducted.

A shared understanding about ownership should be reached among the individuals involved, especially between you and your supervisor, before research starts. Please see Documenting the Research Relationship.

Research data are usually jointly owned by the researcher(s) and the University, which means that both have the right to use the data. If the funding for the research project comes from a sponsor who has been given rights to the data (for example, when the funding is in the form of a research contract), then the sponsor also must be taken into consideration.

The original physical material on which the data and results are recorded is usually the property of the University. You are entitled to retain and use copies of data that you have collected. This depends somewhat on the conventions of your particular department.

Joint ownership of data does not limit your ability to incorporate the data into your thesis with permission of the co-owners, and you will own copyright to your thesis as a whole as a result. This does not give you the right to use the data for other purposes without permission if it arose from a joint project. As a general rule, you must obtain permission to use and provide appropriate attribution of the source of data.

Data Are Not Intellectual Property

In legal terms, it is important to remember that data themselves are not intellectual property. They are neither an invention (i.e. patentable) nor an expression of an idea (i.e. a work protected by copyright). Nevertheless, data can be important and a potentially valuable and proprietary outcome of academic research. If you compile or interpret data in a unique way, you may have an intellectual property interest in the result. The University also has an interest in the resulting intellectual property, if the University has provided resources or facilities that allowed you to compile or interpret the data.

Making Data Public

There are strong scientific conventions that encourage researchers to make data publicly available so others may use them within a reasonable period of time. This promotes the exchange of information between researchers and institutions, allows others to check and challenge results, and helps reduce the overall cost of research. What constitutes a reasonable period of time varies depending on the standards of each research discipline. For example, data collected with SSHRC assistance are public property and must be made accessible to the public normally within two years.

When the student and supervisory committee have some confidence that the thesis will satisfy academic standards, the thesis will be subjected to examination. Doctoral examinations are public and the student should be aware that the information disclosed at this time could be construed as becoming publicly available. Some departments and schools require an examination prior to submission of the thesis to the Faculty of Graduate and Postdoctoral Studies for final examination. If there are intellectual property issues, the departmental examination should provide the student with the same protection as the Faculty of Graduate and Postdoctoral Studies final defense.

The final doctoral examination conducted by the Faculty of Graduate and Postdoctoral Studies is public and the information disclosed during this examination becomes public and is essentially published at that time. All readers of the thesis or dissertation up to the time of the final examination are expected to consider the document confidential.

During the examination, with prior agreement, the Dean of Graduate and Postdoctoral Studies may allow the candidate to withhold specific information that would represent disclosure of patentable information, but this should not constrain the examining committee’s responsibility to evaluate the academic merit of the document.

If there is strong justification, the Faculty of Graduate and Postdoctoral Studies may agree to restrict circulation of a doctoral dissertation or master’s thesis for a limited period of time (typically 12 months, extendable to 2 years in special circumstances). This must be arranged in advance with the Faculty of Graduate and Postdoctoral Studies.

Typically only 1 - 2% of graduate theses are restricted from circulation in an academic year.

Research conditions for everyone involved in a research team or project should be outlined in a letter from the principal investigator before team members become engaged. The Faculty of Graduate and Postdoctoral Studies sends notice of this requirement to each student accepted for graduate studies, as well as their supervisors, at the time of admission.

These notices and a copy of the letter from the supervisor to the graduate student detailing the terms above are kept in the student’s file. If you have not received a letter outlining your research relationship, please contact:

• your supervisor
• your graduate advisory or secretary
• your department head
• your Dean
• the Graduate Student Society President or Director of Student Affairs

“From the Graduate Student Society’s perspective, we feel that establishing a clear understanding of the working relationship between a graduate student and his/her supervisor is critical.” — Annick Gauthier, President, Graduate Student Society.

Records take little time and effort when they are made routinely. They become an invaluable asset to work in progress and ultimately may protect the inventor’s entitlement to intellectual property rights. These ideal practices are described in Record Keeping by Research Corporation Technologies:

• Use a bound notebook for records, making entries on a daily basis on consecutively numbered pages. Always enter any results on the same day they were obtained
• Use the notebook to record concepts (complete description of a means to accomplish a particular purpose or result), laboratory data and drawings. Provide brief interpretations of data whenever appropriate (e.g. whether the experiment worked, didn’t work, gave unexpected results)
• Make entries in ink and do not erase; draw a line through text or drawings to be deleted and enter the material in corrected form. Draw a line through blank spaces on the page
• Separate sheets and photographs pasted to notebook pages should be referred to in an entry. Material that cannot be incorporated in the notebook should be referenced to entry
• Keep a separate lab book for projects that are separately sponsored

A Guide to Protecting Intellectual Property, Canadian University Intellectual Property Group (1995)

Convention for the Protection of Literary and Artistic Works, (Berne Convention) (1886) (1971)

Copyright Act, R.S.C. 1985, c. C-42 (as amended)

Guidelines for Thesis Preparation, The University of British Columbia (2000)

Handbook of Graduate Supervision, The University of British Columbia (2000)

Invention Recognition and Disclosure, Research Corporation Technologies (1990)

Intellectual Property Guidelines for Graduate Students and Supervisors, University of Toronto (1999)

SSHRC Grant Holder’s Guide, Social Sciences and Humanities Research Council (1999)

Tri-Council Policy: Ethical Conduct for Research Involving Humans (2000)

UBC Policy SC6: Scholarly Integrity (1995)

UBC Policy LR2: Research (1993)

UBC Policy LR11: Inventions (2019)

UBC Policy SC3: Conflict of Interest (1992)

UBC Policy Handbook: The University of British Columbia, Office of the University Counsel (2000)

Universal Copyright Convention (1952) (1971)

Dear:

As I explained in our earlier conversation, it is my custom to write to all new students in my lab/group in order to set out my expectations. I have found that this prevents any misunderstandings that might otherwise arise. I hope that you will read this carefully, then sign one of the copies and return it to me.

Let me deal with financial matters first.

[details of TAs, RAs, supplements, summer stipends, etc.]

We will agree on an area of research that you will develop under my general supervision. I expect PhD students in particular to develop a good deal of independence, but I will, of course, always be available to help you develop that independence. We will meet informally in the normal course of events, but I expect to be kept informed about the progress of your work. You should expect me to take an interest in your research, to be available for discussions and to read and comment upon drafts of your writing promptly.

While the culmination of your research will be the dissertation, it is also important that you publish the relevant results of your research. This will be done under our joint authorship, [using discipline norms for the order of names].

Publication is important for many reasons, not the least of which is continuing to attract funding to the lab so that other students can be supported. My ability to pay you from the grants, and to support the expenses of your research rests at least partly on the efforts of students who have preceded you. Thus, if there are outstanding papers when you leave the lab, you will have one calendar year to deliver to me a draft manuscript. If, at the end of that time, you have not produced a manuscript, I will produce the paper, but as a senior author.

You will be a co-author of presentations at scientific meetings that feature your work in a prominent way. I hope there will be opportunities for you to present the research, but on many occasions I am invited to summarize the work of our lab at a conference or in a book chapter. Given the number of people involved in the work, I do not usually include as co-authors in such presentations all the people who have contributed, but I always acknowledge the specific contributions of the individuals concerned.

You must keep orderly records of your research data. When you leave UBC, the original records must remain with the lab. You should, however, take copies with you to assist in writing papers and in dealing with any questions that may come up in the future.

If a patentable or commercializable development arises from your work, intellectual property rights will belong to the University of British Columbia under the terms of the Patent and Licensing Policy (UBC Policy 88). If there is a patent or other commercial application that emerges from your work, income is shared equally between the University and the inventors.

When you leave UBC, you must consider the legal implications of any intellectual property developed during your stay at UBC from the points of view of the University and of any industrial partners. Full disclosure of any plans and potential conflicts of interest should be made to me at the earliest opportunity. We will involve the University-Industry Liaison Office in our discussions if needed.

We all share responsibility for the ethical conduct of research.You should familiarize yourself with UBC policies dealing with research, patents and licensing, conflicts of interest and scholarly integrity.

While it is important to have these understandings, I very much look forward to working with you. I hope that our relationship is always one of mutual respect, and that it might grow, as have many other such relationships in the lab, into friendship. My objective is to encourage your intellectual development to the very limit of your capabilities.

Yours sincerely,

I have read the contents of this letter and understand them.

Student's Signature: