Commercialization Framework

The fundamental mission of the University is to generate and communicate knowledge. These endeavours commonly result in the creation of Intellectual Property that may be of benefit to society.

The rights to Intellectual Property normally reside with the creator of the Intellectual Property when the creators are academic personnel. Intellectual Property created by non-academic personnel normally resides with the University because it is typically created as a result of the individual’s employment with the University, or was commissioned by the University. The primary mission of a publicly funded institution is to create and disseminate public knowledge. The goal of this policy is to encourage the creation of Intellectual Property, and to facilitate the development and commercialization of Intellectual Property, while safeguarding the academic freedom and interest of the University, its faculty, staff, and students.

From Nipissing University Policy on Intellectual Property 2013, page 1

This policy applies to all university personnel and students who create or develop intellectual property. This policy governs all external contractors (with the necessary changes) if the terms of their contracts with the University do not specify intellectual property ownership.

This policy does not apply to intellectual property created by independent effort in the course of demonstrably private research or private consulting to external organizations/businesses, provided that these activities do not involve use of University infrastructure or support, and where these activities have been approved by the University.

Nothing in this policy will override any rights or responsibilities accorded university personnel in any collective agreements to which they are obligated.

From Nipissing University Policy on Intellectual Property 2013, page 2-3

Nipissing University is committed to developing processes, awareness, education and support for the commercialization of research and scholarly activities. The Office of Graduate Studies, Research and Innovation, under the oversight of the Provost, Vice President Academic and Research, will develop the infrastructure necessary to support innovation and commercialization. To that end, a Manager of Research and Innovation will be hired to be the point of contact for innovation and commercialization. The Manager will identify gaps in processes and resources to facilitate planning, development, and implementation of innovation and commercialization policies and metrics to increase capacity consistent with the Ontario Provincial Commercialization Mandate Policy Framework (January 2022). The Manager will plan workshops, link to provincial resources (e.g., IPON), provide access to training (e.g., entrepreneurial skills), and collaborate with Nipissing University Office of External Relations to support community outreach.  In 2022, academic leadership will be realized through the search for an Associate Vice President (AVP) Research, Innovation and Graduate Studies. The Associate Vice President will be expected to provide a leadership to move Nipissing University into new partnerships with the community and region to increase capacity and help grow the economy. The Office of Graduate Studies, Research and Innovation will serve as the community, region, and industry portal into research at Nipissing University to facilitate innovation and commercialization.

Ownership of Intellectual Property

i. Ownership

Academic personnel/students own the intellectual property that they create in the course of their teaching, research and academic work, except as otherwise specifically provided herein.

Exceptions to the above are listed below:

1. The University will negotiate a contract that specifies the terms of ownership of intellectual property resulting from initiatives that are specifically commissioned by the University that is outside the scope of the assigned duties of the academic member.
2. Ownership of Intellectual Property in externally sponsored research or in contracted research activities may be determined in whole or in part by the regulations of the sponsor or the terms of the contract. University personnel must be aware of any such regulations or contract terms by the principal investigator (i.e., leader of the research project) before participating in these research activities.
3. When an academic member/student dies, the estate will retain all rights, responsibilities and obligations under this policy, unless the estate transfers the rights, responsibilities and obligations in writing to the University or to another party.

The University owns intellectual Property that is created by non-academic personnel in the course of their employment.

Commercialization of Intellectual Property

i. Timely Disclosure

Academic personnel/students who have developed intellectual property that they intend to commercialize must inform the Vice-President, Academic and Research in advance, in writing and in a timely manner of their intent to do so. This disclosure must include the nature of the Intellectual Property, the names of the creator(s), the source of funding from which the Intellectual Property evolved and any other relevant information. The University will inform the creator(s) that they may commercialize the Intellectual Property themselves or the University may offer to assist with the commercialization and will provide information about those options.

ii. Commercialization by Creator(s)

If the creator(s) elect to commercialize the Intellectual Property, they assume responsibility for legally protecting and marketing it, finding a licensee, negotiating a license agreement, and administering that agreement. Any such license agreement must contain full and complete releases and indemnification of the University with respect to commercialized Intellectual Property. The University will receive 10% of Net Revenues arising from the Intellectual Property annually. The Intellectual Property shall remain subject to the license and other rights of the University under these policies.

Where non-academic personnel are co-creator(s) of the Intellectual Property and the where the University has not waived its ownership rights as the employer of such non-academic personnel, the Vice-President, Academic and Research shall represent the University’s interest in all matters related to this Intellectual Property.

The University is not responsible for any legal, development, marketing and other costs that may be incurred, including patent prosecutions if the creator(s) pursue commercialization on their own.

iii. Commercialization by the University

Creator(s) may offer to the University the Intellectual Property for commercialization. The University retains the absolute and sole right to determine whether to accept such Intellectual Property for commercialization.

The University may seek a commercial and/or technical assessment of the Intellectual Property before accepting any assignment. Prior to conducting the assessment, the University will enter into an agreement with the creator(s) with the following terms and conditions:

1. If the University accepts the offer, the University thereafter shall deal with such rights, including any further assignment to some specialized external agency. The University shall assume sole responsibility and authority for legally protecting and marketing the Intellectual Property, finding a license or sale agreement, and administering the agreement. The University shall retain 50% of Net Revenue arising from the Intellectual Property and the creator(s) shall receive 50% payable on an annual basis, unless the University and the creator(s) agree to a fixed percentage of Gross Revenue that is of equal or greater value for the University.
2. If, as a result of the assessment, the University decides not to act to protect and/or commercialize the rights to the Intellectual Property, these rights shall be returned to the creator(s).
3. If, after three years from the date of the assignment (or the date of the issuance of the Patent), the rights to the Intellectual Property have not been assigned or licensed, at the creator(s) request they may be assigned back to the creator(s) provided the creator(s) reimburse the University for all Development Expenses prior to any disbursement of revenues and remit to the University 10% of the Net Revenue arising from the Intellectual Property on an annual basis.

University academic staff/students are not required to use the University’s services, nor is the University obligated to take any Intellectual Property brought to it.

From Nipissing University Policy on Intellectual Property 2013

At Nipissing University, commercialization activities are guided by our unique role in supporting northern communities as well as Indigenous, first generation, and international learners. As a result, Nipissing University will prioritize industry partnerships that serve these groups and that offer a net benefit to our local, provincial, and global communities. In practice, this means considering the following factors prior to undertaking commercialization activities for IP:

• Knowledge mobilization
• Ontario based investment and growth
• Social innovation for Ontario

Engaging in partnerships locally, nationally and globally allows Nipissing University to expand the breadth and impact of its commercialization activities.

Nipissing University will actively seek out opportunities for collaboration with organizations within the innovation ecosystem. These partners may include:

• Innovative Initiatives Ontario North (iiON)
• City of North Bay Economic Development
• National Research Council of Canada Industrial Research Assistance Program (NRC-IRAP)
• The Business Centre of Nipissing-Parry Sound
• Mitacs
• Government, community, and industry partnerships
• Legal services related to IP
• Canadore College