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Research Partnerships & Innovation

College Applied Research Series: Intellectual Property

November 3, 2014

This article is the second in a series of four by Ray Hoemsen, Director, Applied Research & Commercialization, Red River College.

This article is the third article in the College Applied Research Series by Ray Hoemsen, Director, Applied Research & Commercialization, Red River College.

As originally published in the Canadian Association of Research Administrators (CARA) Newsletter.
Community-based economic development is a key driver of applied research in the college system, which supports industry innovation, productivity, and competitiveness. Technology diffusion (adoption and adaption of technology) is of greater relevance than technology commercialization. Most colleges do little, if any, curiosity-driven research. Therefore, most college applied research is industry focussed.
Many industry applied research projects are supported by funding from the Tri-Council, most often the Natural Sciences and Engineering Research Council (NSERC). Intellectual Property (IP) can be an integral component of the research results – in which case NSERC policy does not make any claim to the IP, while generally expecting benefits to accrue in Canada. However, NSERC does expect/require that:

  • industry partners have the ability to use the research results for commercial purposes;
  • institutions and their researchers are able to use the research results for academic purposes; and
  • students are able to publish their thesis and acknowledge their participation on their resumes.

With the support of NSERC, the Association of Canadian Community Colleges has developed an “IP Toolkit[1]” which contains college-based IP-related practices and agreement exemplars. In contrast to the university sector, Canadian colleges tend to have relatively similar IP policies[2],[3], which generally exhibit the following characteristics:

  • mandatory institutional ownership of IP developed with college resources;
  • mandatory disclosure of inventions; and
  • equitable sharing of any net returns from commercialization activity.

However, since there is a strong desire by colleges to see research results used for economic benefit in the community, rather than as a source of royalty revenue, coupled with minimal interest in patenting by the institution; there is little need to negotiate licenses or royalties, which can be a very time consuming (and often irritating) exercise for little (potential) return for all concerned.
As a result, colleges frequently grant commercial rights to research results to their industry partners, while retaining rights for academic (research and education) purposes. For example, under Red River College’s Intellectual Property Policy (A10), the College has mandatory institutional ownership of IP (to enable maximum clarity if a licensing situation may arise), including any IP which is created by students employed on the project. The policy is flexible enough to accommodate transfer of ownership, in the event the private-sector partner(s) require ownership. The College’s normal practise is to grant private sector partners commercial rights (royalty free), while the College retains rights for further research and education. As a result, there have never been any IP-related problems or issues between the College and industry since this practise was instituted in 2004. Industry finds the College to be very “IP friendly” and agreements on applied research projects are normally negotiated and signed rapidly.
There are several advantages to such college-based IP policy and practise commonalities, such as:

  • industry partners working with multiple colleges tend to find similar practises dealing with IP;
  • there is clarity with respect to IP ownership, in the event a licensing situation arises;
  • IP does not create barriers to collaboration, fostering greater industry engagement;
  • institutional IP protection (and thus legal) costs are non-existent or greatly minimized, since patenting by the institution is relatively rare;
  • the time to negotiate project agreements is minimized, resulting in faster turnaround; and
  • IP is NOT an impediment to industry-academic research collaborations!

[2] Intellectual Property Policies in Colleges and Institutes. Ray Hoemsen, P. Eng., Red River College. Presentation to the Association of Canadian Community Colleges Applied Research Symposium, Edmonton AB. February 27, 2008.
[3] National Model of Intellectual Property (IP) Practices in College/Institute Applied Research Projects. Association of Canadian Community Colleges IP Working Group. Report for NSERC. March 2012.