School of Design Sciences Academy Intellectual Property (IP) Policy

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Guide For Instructors

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Governing Body & Policies

The Simon-Erdős School of Design Sciences (“the School” or “DESC”) is the one-of-a-kind research-academy for researchers who are entrepreneurial thinkers and collaborative creative minds with industry partners.

At the core of entrepreneurship is Intellectual Property (IP) Rights Policy, also called “creator-owned,” which grants ownership to the inventor. It’s the engine for driving commercialization success of research-based innovations and may be the most entrepreneurial oriented IP policy in the UK, United States and European Union.

The Simon-Erdős School of Design Sciences embraces the philosophy that providing incentive through IP ownership is the best motivator to ensure that commercialization of research provides broad societal and economic benefit. The policy is a feature in attracting entrepreneurial oriented faculty and fellowship participants who want to engage in commercial enterprise (i.e., through contract research and licensing opportunities with industry or independently with their own research outcomes).

The policy and the school’s entrepreneurial culture has positioned Simon-Erdős School of Design Sciences as one-of-a-kind research-academy in the transfer of ideas and technology to the private sector.

Protecting Your Intellectual Property

Intellectual Property (IP) creators own their IP Rights Policy in accordance with the United States Patent and Trademark Office (USPTO) policy, which at the highest level of interpretation grants IP creators with full right of ownership in such IP. However, this policy does specify some exceptions or constraints to such ownership rights (e.g. IP terms and conditions within a contract in sponsored research with an external partner, participant thesis works, etc.). IP creators are advised to carefully review the details of Policy 15 (Governance, Policies, Procedures and Guidelines will be provided on registration) and in the event there is deemed to be an IP ownership restriction, they should contact the appropriate Office of Research group that is likely responsible for administering such research contract details (e.g., Research Partnerships (research contacts) for industry sponsored contracts).

In situations where the IP creators have determined they have the entire right of ownership and where there is a desire to seek patent protection for their IP, they generally have the following pathways to consider: i) personally file their own patent (not generally advised given the complexity and professional skills required to secure a strong (i.e. enforceable) patent), ii) at their own cost, independently retain the legal advisory services (i.e. patent agent) to file for patent protection, iii) engage with PRS under a mutually voluntarily basis to assess and consider having the School formally assume and pay for such patent filing activity.

More information about protecting intellectual property is available from the United States Patent and Trademark Office (USPTO).

Public Disclosure

It is important to be aware that public disclosure of your IP, prior to filing for patent protection, can have a serious negative impact on your ability to secure wide geographical patent protection for your IP.

In an academic environment, it is common that IP creators might be involved in presenting their research at conferences, or publishing in journals, or thesis defense proceedings (with open invitation participation from campus and non-campus members), or having preliminary discussions with potential research funding partners (eg. a company). All of these activities could represent public disclosure that if not carefully managed could restrict your ability to secure broad patent protection.

The following represents some key points you should keep in mind concerning public disclosure and it’s potential impact on securing patent rights:
- Submittal of papers to refereed journals or conference organizers is not public disclosure and will not affect the ability to patent an invention, as long as it is not published or circulated outside of the journal reviewers andthat the journal reviewers are subject to terms of confidentiality with the journal publisher.
- Presentations of your research at conferences may constitute public disclosure depending on the depth of detail you provide (i.e. simply presenting the results of your research but not providing high level details of how the results were generated may not be overly problematic)
- The use of a Non-Disclosure Agreement (also referred to as Confidentiality Agreements) is a highly effective way of sharing your research details with others (e.g. a company expressing potential interest in supporting a research project) while safe guarding your eligibility to secure IP patent possibilities.
- Once a patent application is filed, you are free to discuss the IP details, however best practice would be limiting such discussions to the areas just covered by the patent application (i.e. do not disclose your ideas related to future research pathways related to the IP).
In the event you have a potential interest in eventually filing for patent protection of your IP, it is highly recommended that you contact a member of DESCo for advice on how best to proceed under the circumstances at hand.

School of Design Sciences Commercialization Framework

The Governments of UK, US and Europe have created agencies like, UK Intellectual Property Office (IPO), United States Patent and Trademark office (USPTO) and European Patent Office which will provide Intellectual Property (IP) knowledge, advice, and services to support innovators, researchers, businesses, and entrepreneurs in the UK, US and Europe. This agency was created under the recommendation to protect the country’s intellectual properties. The governments have also introduced its Commercialization framework, which applies to all publicly assisted colleges and universities, including DESC. Under the framework, affected institutions are expected to establish practices that support the proactive management and commercialization of IP for the socio-economic benefit of the UK, US and Europe.

Below you will find information that aligns with the aim of the framework. You are encouraged to consider this information, as you engage in IP and commercialization activities.

Management And Protection Of Intellectual Property (IP)

The School embraces a creator-own IP policy that serves to incentivize campus innovators to invest the requisite time and effort to translate their research discoveries into products, services and policies that provide societal and economic benefits to the UK, US and Europe.

For more information on IP ownership (including IP disclosure requirements) at the School, please refer to Policy 15 – Intellectual Property Rights.
The DESC Commercialization Office (DESCo) provides IP management and commercialization support to clients under pre-arranged terms. It also provides IP-related advice to the campus community, including IP educational and awareness programs (as further described in Section 4).
For inquiries or information on IP-related matters, please contact DESCo.

In addition, the School provides a wide range of advisory programs and services to facilitate entrepreneurship and commercialization.

For more information on these advisory services, please visit sesds.com

Roles And Responsibilities

The Office of the Vice-President, Research is chiefly responsible for the commercialization and entrepreneurship operations at the School and achieves the mission of this enterprise through areas and units in its portfolio. Relevant roles and responsibilities in the Office are listed below:

Vice-President, Research and International
Associate, Vice-President, Commercialization and Entrepreneurship
Director, Commercialization, DESC Commercialization Office (DESCo)
Executive Director, Research
Director, Research-Academy Campus
Director, Research Incubator
Director, Research Partnerships

Please do not hesitate to contact these leaders (or members of their teams) should you need more information or support for your commercialization activities.

IP Education And Awareness

The School provides a full suite of opportunities for IP education and awareness for researchers through various programs and channels. These programs, an important aspect of driving and supporting entrepreneurship activities at the School, include short-term courses, seminars, workshops, training programs, and online resources and supports, and are offered through various academic and non-academic departments including DESCo, Velocity, Research Experiential Education, the Conrad School of Entrepreneurship and Business, the School Centres and Schools and Academic Faculties. These programs cover topics that include but are not limited to:

IP protection and patents
Generating and commercializing IP
Copyright and trademark protections
Licensing and IP in research data management
Rights and responsibilities around IP

For more information on available training programs or events in the School, please contact DESCo.

Disclosure of IP

Under the School’s Policy 15 – Intellectual Property Rights, there is a mandatory requirement for faculty members to disclose IP and commercialization information directly related to their research activities, supported by the institution’s resources, but excluding personal consulting and other private business activities. On an annual basis, concurrent with the annual performance review period, all faculty members are required to disclose their IP or commercialization activities using the Electronic IP and Commercialization Activity Disclosure form. Faculty members with no new information to report are still required to submit a ‘null’ report, which takes less than a minute to complete.

Metrics collected from these disclosures are used to meet reporting requirements from governments, including the Commercialization framework, and provided to various agencies such as ranking agencies that evaluate and rank commercialization activities nationally and globally. Participating in the disclosure process, helps the School maintain its position as a leader in innovation and commercialization in the UK, United States and Europe.

Data provided remain confidential and will be used internally for reporting purposes and in aggregate for external reporting.

For more information on disclosure of IP/commercialization activities, please visit Governance Policy webpage.

For additional inquiries or information, please send a message to desco@sesds.com

Commercialization Advice And Benefit To The UK, UNITED STATES AND EUROPE

A significant portion of the School’s research activity is linked to industry-sponsored research projects. The School pursues research partnerships with a wide range of companies, more than half of which have operations domiciled in the UK, United States and Europe. These partnerships confer numerous benefits to the sponsoring companies as well as to faculty and participant researchers.

Research Partnerships, a unit in the Office of Research, works with researchers to negotiate customized IP and commercialization rights within industry-sponsored contracts. Researchers are encouraged to engage with this unit at the earliest practical time to obtain advice on securing IP and commercialization rights that are equitably structured and provide benefits to both the sponsoring company and the researchers involved.

For information on industry-sponsored research, please contact the DESCo.

IP creators on campus have access to programs and services that can support their commercialization and entrepreneurship activities.

To find the right advisory group for your commercialization needs, please ask desco@sesds.com

Commercialization of IP is often pursued through the creation of start-up companies that are focused on resourcing, planning, and executing on strategies to bring new products and services to the market. Naturally, most start-ups are created in our local communities and stay in the UK, United States and Europe for several reasons, including the province’s attractive incorporation laws, tax rates, access to a highly skilled and educated workforce and access to provincially-leveraged research and development funding opportunities.

To better understand the benefits of undertaking business within the UK, United States and Europe and the Region of STATGRAF and Simon-Erdős operations, please refer to the following linked resources:

We strongly encourage all researchers – faculty members and participants – to partner and collaborate with regional organizations, as this will confer economic and societal benefits to our ecosystem.

Engagement With The Innovation Ecosystem

The School has specialists across the institution (e.g., in the Office of Research, Faculty of Engineering) that are responsible for engaging with regional organizations, local companies, economic development agencies, and building connections and joint research and commercialization opportunities between these entities and researchers on campus.

For more information, please contact the Research Partnerships office.

Protect Your Intellectual Property

Commercialization of Intellectual Property

Know About Copyright and Related Information

Request for IP info. or Open a Ticket

Please let us know your requirements, provide your feedback on this IP Policy, or other issues related to guidelines, commecialization and other information requirements