Frequently Asked Questions

Why should I report an invention?

If you want to commercialize the invention, it needs to be reported to the Technology Transfer Office in ORD. This is the only way in which the TTO can be made aware of your invention. Once we have all of the details, we can work with you to evaluate the commercial potential and, if you elect to move forward in the technology transfer process with us, to develop a commercialization plan.

Commercialization can lead to benefits for everyone: the inventors, the University, businesses, and society. If you do not disclose your invention, it may never achieve practical application or someone else may patent and benefit from it.

How can I report an invention?

The first step is to discuss it with the TTO. You will have to complete the Invention Disclosure Form. Please contact the Technology Transfer Office to initiate this disclosure.

When should I report an invention?

It is a good idea to report inventions to the TTO as soon as possible, and certainly before submitting results and papers for publication or presentation. Reporting an invention to the TTO is a confidential process between University and the researcher. Researchers should contact the TTO when they:

  • Have questions or concerns regarding IP protection and its commercialization;
  • Believe, or suspect that they have created a valuable invention or discovery;
  • Plan to release information about an invention they have created in a publication or through a presentation;
  • Plan to receive or send materials to another institution or company; or
  • Are identified as an inventor of a technology created at another institution or company.

Who should I contact to report an invention?

If you are not already working with the TTO, please visit our Contact Us section of this website.

 

Can I still publish my work if I report an invention?

While the TTO is reviewing your disclosure, you may be asked to temporarily delay publishing your work. Once an IP protection strategy is identified and initiated, inventors are free to disclose their work, such a by publishing in a journal or presenting at a conference.

Is it too late to report an invention if I have already disclosed it?

It is possible to file for patent protection of an invention before any public disclosure has occurred; however, it is very difficult once it has been disclosed. In such a case, please contact the TTO as soon as possible to discuss the situation.

How do I protect against disclosure?

 

The best way to protect against disclosure is by not sharing your research with anyone prior to IP protection being sought. This includes not only the methods and results, but also any forward-looking statement about your future plans and why you think they might generate an invention. This however is not always possible, so there are measures in place which can help keep your invention confidential.

Confidentiality Agreements

Confidentiality Agreements can be signed between the University and other companies, institutions or individuals prior to discussing your ideas. A sample Confidentiality Agreement is available here, and the TTO can help in their preparation and having them signed on behalf of the University.

Material Transfer Agreements

Material Transfer Agreements should be signed before transferring any materials to or from your lab. A sample Material Transfer Agreement is located here, and the TTO can help in preparing them and having them signed on behalf of the University.

Patents

Once an invention is disclosed to the University, the TTO can evaluate it to determine whether it is patentable. An invention disclosure form is located here. Please contact the TTO to initiate the disclosure process.

Is reporting an invention time consuming?

 

An invention is reported by completing the Invention Disclosure Form and submitting it to the TTO. The TTO can assist with this process. We will then start an evaluation process and decide within 90 days if a patent will be filed. If a patent is filed, the commercialization process may take time and does require further involvement by the inventors. It is important to have the commitment of the inventors throughout the process.

Is there any guarantee my invention will be protected by a patent?

No. To be patentable, an invention must be novel, useful, non-obvious and of a suitable subject matter. However, an invention may still have commercial value even if it is not patentable.

Also, during our technology assessment, we might find prior art (ie, other public information covering aspects of your findings) which would eliminate the possibility of filing for patent protection, or we may identify that the market is too small or too crowded to warrant the filing of a patent.

Who pays for patent protection?

If UPEI agrees to work with the researcher to pursue commercialization, and the inventors wants UPEI to be involved in the process, UPEI pays for all patent costs. Inventors do not have to spend their money. The inventors and the University shall share in the net income generated through the successful commercialization of the invention.

Having reported an invention, can it gives me access to additional funds for my research?

TTO can help an inventor to apply to special funds from CIHR, NSERC and elsewhere to further develop inventions that are protected by patents.

Who receives the licensing income from an invention?

After the recovery of any third party cost realized from the IP protection and marketing of the invention (primarily patent costs), the inventors shall share 50% of the net licensing income realized and the university shall receive 50%.

What can the TTO do to help you as an inventor?

If after the technology evaluation process, the University and the researcher decide to work together towards commercialization, the TTO will manage the commercialization process. Some specific activities of the TTO include:

  • Counseling researchers on a wide variety of IP matters;
  • Providing information to researchers on the technology transfer and commercialization processes, and assisting researchers in recognizing the commercial potential of the research;
  • Assisting researchers with the preparation of invention disclosures;
  • Protecting the IP generated by UPEI researchers, and facilitating IP development;
  • Identifying sources of funding which can help advance research with commercial potential;
  • Promoting and marketing the opportunities for technology transfer to potential industry partners;
  • Negotiating licenses, and management of license agreements, revenue collection and distribution.

Do not hesitate to contact us with any concerns that you have with respect to Intellectual Property and Commercialization.