Intellectual Property Policy

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Intellectual Property Policy

BA-001
Intellectual Property Policy
DepartmentEVP, Education and Business Affairs
Creation DateMarch 3, 2004
Approval DateNovember 18, 2021
Effective DateNovember 18, 2021

Purpose

The purpose of the following policy is to delineate the rights and/or the obligations of faculty, contract instructors, staff, students, and The Michener Institute of Education at UHN (Michener) in respect of intellectual property arising from Michener related activities.

Michener encourages the development of inventions, creations and other intellectual property arising from educational activities, research, clinical and related activities conducted at Michener. Michener seeks, where it deems appropriate, to secure intellectual property protection for the outputs of such activities. Michener also seeks to encourage the development and commercial investment of Michener intellectual property for the benefit of, amongst other stakeholders, the public, learners/students, patients, creators, and the research sponsors. This requires Michener to secure, manage, and develop such intellectual property. This Policy sets out the framework through which intellectual property is managed for the benefit of Michener and its stakeholders. The Policy also clarifies how potential overlap as between the application of this Policy and the intellectual property policy of UHN will be managed.

Policy

GENERAL MATTERS & ADMINISTRATION

It is the policy of Michener that all intellectual property which is conceived and reduced to practice, (i) by Michener personnel, or (ii) using Michener resources, is the property of Michener as further detailed below.

Michener will exercise ownership and management of Michener-owned intellectual property with due regard to the principles and procedures set forth in this Policy.

The Office of the Michener EVP, Education is responsible for the general administration of this Policy along with the Michener Business Affairs Office.

No agreement or any other arrangement in respect of the subject matter of this Policy will override the application of this Policy unless specifically confirmed in writing by the EVP, Education or the faculty collective agreement; failing which, this Policy will apply in spite of any such agreements or arrangements to the contrary.

This Policy shall not be interpreted to limit Michener’s ability to meet its obligations under any third party contract, grant or other arrangement or third party agreement which could be impacted by this Policy.

This Policy is a condition of (as appropriate) the initial or continuing appointment, engagement or employment of, or a condition of enrollment and attendance and training of, all Michener personnel. Michener personnel may be required to sign agreements incorporating the terms and provisions of this Policy; but the absence of any such agreement or the failure to sign shall not affect the applicability of the Policy nor relieve any Michener personnel from the obligations imposed by the Policy.

Michener reserves the right to amend or modify any of the provisions of this Policy as it may determine from time to time in its sole discretion.

SCOPE OF POLICY

All Michener faculty, contract instructors, staff, students, and the Michener Institute of Education at UHN.

EXTERNAL SCOPE: Partnerships with other academic institutions and industry.

CROSS-APPOINTMENTS & ACADEMIC/RESEARCH COLLABORATIONS (e.g., Universities, Colleges, Institutes)

To avoid conflict, Intellectual Property developed by UHN Personnel (including those cross-appointed to Michener) shall be deemed to be governed by the UHN intellectual property policy (UHN policy 1.20.013), in preference to this Policy, unless there is a written agreement to the contrary. A written agreement between UHN and Michener will be entered into to address situations where the default application of the UHN policy is not appropriate. In the event that unanticipated conflicts arise, UHN and Michener will work together in good faith to resolve such conflicts.

Intellectual Property developed by Michener personnel who are cross-appointed to a non-Michener, non-UHN institutions, or developed in association with individuals who are affiliated with any other non-Michener non-UHN medical and/or educational organizations, shall be governed by this Policy unless (and to the extent) there is a written agreement between Michener and that organization which specifically deals otherwise with any such intellectual property.

IP POLICY MANAGEMENT

The Michener Business Affairs Office manages the matters relating to this Policy including, but not restricted to, the receipt and review of intellectual property disclosures, the filing and management of appropriate intellectual property – related registrations (e.g. copyrights), the commercial licensing or provision of intellectual property rights to external parties, and the receipt and distribution of any revenues from the licensing or other commercial disposition of Michener intellectual property.

DISCLOSURE & RELATED OBLIGATIONS

Michener personnel must disclose to the Michener Business Affairs Office all work products with the potential to create Michener intellectual property in a timely and thorough manner, and well prior to any public disclosure or presentation, attaching all supportive scientific and other related information.

At the request of the Michener Business Affairs Office, Michener personnel shall execute assignments and any other documents required to evidence the assignment of intellectual property rights to Michener, and further assist the Michener Business Affairs Office (as necessary) in respect of all other matters associated with the assignment, filing and registering of protective rights in the Michener intellectual property. As such, Michener personnel must provide in a timely manner all requested information and execute all documents required by Michener for such registrations and as further required for the formalization and/or recording of Michener’s ownership in the Michener intellectual property. In addition, author(s) of Michener intellectual property shall waive, and do hereby waive by application of this Policy, any moral rights in such Michener intellectual property in favour of Michener.

If Michener declines to protect or further commercialize any patentable (or other protectable) Michener intellectual property, Michener may, in its sole discretion, agree to license or assign the Michener intellectual property to creator(s) upon request.

THE MICHENER INSTITUTE OF EDUCATION AT UHN OWNERSHIP

Michener solely owns:

  • all intellectual property developed by Michener personnel utilizing in any manner, whether directly or indirectly, Michener resources; and
  • any intellectual property otherwise arising through the access to, or the use of Michener resources in any manner, whether directly or indirectly, (collectively the Michener intellectual property, as further defined)

By application of this Policy:

  • Michener personnel irrevocably assign to The Michener Institute of Education at UHN all of their right, title and interest in and to any Michener Intellectual Property (which includes research works and institutional works, traditional academic works and any associated rights in such Michener intellectual property (e.g. copyrights); and,
  • author(s) of Michener intellectual property waive any moral rights in favour of Michener.

CLAIMS TO OWNERSHIP OF INTELLECTUAL PROPERTY PURSUANT TO THIS POLICY

For the purpose of this section, faculty, contract instructors, staff and students hired by Michener to conduct or participate in certain research or other projects, shall be referred to collectively as “employees”.

(i) When Michener may claim Ownership of Intellectual Property

When a person is employed by Michener, either on a full-time or part-time basis, and any intellectual property generated in the course of activities related to their employment, Michener shall be the owner of the intellectual property, unless (i) Michener waives ownership in whole or in part by written instrument signed by the EVP, Education, or (ii) Michener has entered into an agreement with a third party assigning ownership to that third party, in whole or in part.

For the purposes of this section, the phrase “activities related to their employment” includes, without limitation, teaching, publishing and research activities, whether such research is internal to Michener, or pursuant to a contract with a third party, and any other activities normally undertaken by the employee, regardless of whether these activities are performed during normal working hours or “after hours”, or physically at Michener or at some other location, and regardless of whether these activities are established by a written or oral agreement or by conduct. Employees of Michener shall promptly execute any assignment or other document necessary to facilitate Michener’s ownership, licensing or enforcement of the intellectual property pursuant to this policy.

For all intellectual property owned by Michener, employees waive all their moral rights in favour of Michener and its successors, assigns and licensees.

(ii) When Employees may Claim Ownership of Intellectual Property

Employees may claim ownership of intellectual property when the intellectual property is created in the course of activities that are wholly unrelated to their employment and are undertaken without using Michener’s facilities or equipment or funding.

Employees may also claim ownership to intellectual property that they develop pursuant to (i) a written agreement with Michener or (ii) a written agreement with a third party that has been approved by Michener in writing, and that gives the employee all or part ownership of the intellectual property. If an employee believes that he or she has a claim to partial ownership, the employee shall promptly file a written submission that outlines a proposed joint ownership of the intellectual property. Michener may agree to the proposal, reject the proposal, or offer a counter-proposal, within 30 days from receipt of the employee’s submission.

(iii) When Employees may use Intellectual Property Owned by Michener

Employees are permitted to use and disclose intellectual property owned by Michener for (i) their teaching duties at Michener, and for (ii) any research or other uses authorized by Michener in writing.
Employees shall not use or disclose any confidential information except as specifically instructed by the owner of the confidential information, whether Michener or a third party. The fact that Michener has full or part ownership of the intellectual property, does not preclude any employee from making a development proposal to Michener.

Employees shall not use or disclose any intellectual property owned by Michener for their financial or other material gain unless they have been authorized to do so in writing by Michener, after having submitted a written application for such authorization. Michener shall be under no obligation to approve such applications. Those employees who receive authorization in writing to use intellectual property owned by Michener (in whole or in part) shall provide Michener with annual written reports of all activities undertaken in relation to the intellectual property during the previous 12 months, which shall include (i) the names and addresses of all persons granted a licence to use the intellectual property, (ii) a detailed list of all expenses relating to the development, protection and/or licensing of the intellectual property, and (iii) a detailed list of all income or other benefits received by the employee relating to use or disclosure of the intellectual property. Employees shall be required to pay to Michener a percentage of the monies received from all activities related to the exploitation of that intellectual property, which percentage shall be the subject of negotiation but shall not be less than ten percent.

(iv) When Michener may use Intellectual Property owned by Employees

Michener may use the intellectual property owned by its employees pursuant to any written agreement with the employees, or pursuant to any contract between Michener and a third party that deals with the creation and use of the intellectual property at issue.

DISPUTE RESOLUTION

In the event of any dispute arising under this Policy, there will be an initial attempt to resolve the dispute by the Michener Business Affairs Office. If resolution is not successful, the dispute will be escalated to the EVP, Education.

Appeals

An employee who disagrees with a decision made by Michener pursuant to this policy, or who believes that his or her intellectual property rights are being infringed by Michener or by a third party who is connected to Michener on a research project, partnership or other educational endeavour may make a written appeal to the Michener Business Affairs Office. All written appeals must contain the following:

  • reasons for making the appeal;
  • the names of all parties involved;
  • what action on the part of Michener is sought;
  • a statement of the facts on which the employee relies; and
  • a statement setting out any material changes from any original notice.

All appeals will be reviewed with the EVP, Education and appropriate action taken to resolve the matter in a timely manner.

TRADEMARKS & MICHENER OFFICIAL MARKS

Michener personnel shall obtain written approval from the Michener Business Affairs Office for the use of the name or logo of Michener, a Michener member institution, or a Michener associated research or teaching institute, in any advertising, promotional, endorsement or sales material in any medium.

However, it is generally acceptable (and therefore requires no further approval) for Michener personnel to use the name and logo of Michener, a UHN member hospital, or a MI associated research or teaching institute, in a traditional academic works or for other academic-related reasons to identify the association of the Michener personnel with any of the aforementioned entities.

No trademarks shall be applied for, or registered, in respect of any product, service or any other activity associated with MI, or a UHN member hospital, or a MI associated research or teaching institute, without prior permission from Michener’s Business Affairs Office. Unless specifically agreed to otherwise by Michener, any trademark associated with any product, service or any other activity associated with Michener shall be owned by Michener.

CONTRACTS & OTHER AGREEMENTS

(Examples include: Contracts, Research Contracts, Partnership Agreements, Memorandum of Agreements (MOAs), Memorandum of Understanding (MOUs), Material Transfer Agreements [MTAs], Confidential Disclosure Agreements/Non-disclosure Agreements [CDAs/NDAs])

No contract for partnerships, research, or educational endeavours (such as sponsored research agreements, research service agreements, partnership agreements, MOAs) may be entered into by any Michener personnel with any external partner, unless it is documented in writing and signed by the EVP, Education (or designate) and as further mandated in other relevant Michener policies.

All contracts must incorporate the appropriate Michener institutional overhead charge.

The Michener Business Affairs Office manages the process for the review and execution of contracts including CDAs/NDAs governing the disclosure and/or exchange of any research/technology – related confidential or proprietary information with non-Michener external parties.

For clarity, Michener personnel may not separately negotiate or accept any arrangement or offer of financial or other support from a source other than Michener for the development, protection, patenting or licensing of Michener intellectual property, or engage in the transfer of any Michener materials or Michener confidential information to a non-Michener individual or entity without first involving the Michener Business Affairs Office, or first obtaining approval from appropriate Michener Executive Management.

RESEARCH CONDUCTED AT MICHENER

Michener employees engage in various forms of research. When funds will be provided by an external granting agency for the purpose of scholarship, faculty or staff typically originate a proposal and formally apply (on behalf of or involving Michener) to the granting agency, or originate a proposal in response to a general solicitation. Granting agencies generally surrender any ownership interest to the named Principal Investigator on the project. If the Principal Investigator is an employee of Michener, ownership of the intellectual property resides with Michener.

Contract research is any research conducted for a company, government, organization, or individual, where a formal contract between Michener and the external party is made and where (generally) there are defined outcomes and payment is made after receipt of invoices from Michener. The contract normally assigns ownership of the intellectual property to the external party.

Internally generated research is any research for the pursuit of scholarly knowledge or professional development which has had funds, resources or contributions made from Michener or from any internal source. Normally such research projects are awarded for the purpose of scholarship or as a means to investigate the potential of a particular topic towards supporting either a research grant proposal or a potential contract with an external party. Ownership of this intellectual property will reside with Michener.
For research completed during paid leave (commonly termed sabbatical research), ownership of the intellectual property will reside with Michener.

Should faculty, contract instructors or staff undertake research on their own time, without funding from Michener and without using Michener facilities or equipment, Michener would have no claim to ownership of the research or related intellectual property.

COMMERCIALIZATION

GENERAL CONSIDERATIONS

The Michener Business Affairs Office has the primary responsibility for negotiating all licenses and/or other agreements pertaining to the commercialization or exploitation of Michener intellectual property for commercial use by third parties and the receipt of gross revenues from this commercialization. The Michener Business Affairs Office will seek the best and fairest deal it can obtain through good faith negotiations on behalf of Michener and creator(s). This includes typical licensing terms such as license fees, royalties, milestone payments and securities (such as equity or debt), as appropriate.

The Michener Business Affairs Office shall generate and disseminate marketing materials including marketing summaries, and work with creator(s) to develop scientific and business presentations and to identify potential licensees for intellectual property.

Any license or other binding agreement in respect of the licensing or commercialization of Michener intellectual property must be approved and executed by the Michener Business Affairs Office and EVP, Education and as further mandated in other relevant Michener policies.

Michener reserves the right to enter into further agreements with other agencies for the purpose of advancing the commercialization of specific opportunities, with due consideration being given to the principles of this policy.

DISTRIBUTION OF COMMERCIALIZATION REVENUE

In principle, Michener strives to maintain any permitted entitlement of an individual creator to share in Michener net revenues under this Policy.

Any distributions of revenue entitlements to individual creator(s) further to this Policy will occur once annually at the end of Michener’s fiscal year. Notwithstanding, Michener may agree to an earlier or more frequent revenue distribution(s) in its (i.e. Michener’s) sole discretion.

All revenues received by Michener for distribution to creator(s) will be held in Michener accounts prior to distribution. No interest on such revenue entitlements will accrue and be paid to creator(s).

MICHENER REIMBURSEMENT

Prior to any further distribution or use/allocation of commercialization revenue under this Policy (e.g. to creator(s)), Michener shall first be reimbursed for the following (in order of priority):

(i) reimbursement of Michener’s out-of-pocket costs and fees associated with securing, maintaining, and enforcing intellectual property protection such as patenting and litigation expenses; out of pocket costs incurred by Michener in the commercialization of the intellectual property such as expenses for marketing, commercial assessment, financial valuation, advisory services, agency fees, and the management and liquidation of securities (such as equity); and out of pocket expenses in making, shipping or distributing material;

(ii) reimbursement of defined Michener investments, costs and expenses related to the technical/scientific or commercial development of the licensed Michener Intellectual Property (including, but not limited to, financial investments such as direct cash infusions, debt instruments and loans, and other agreed-upon support, costs and expenses, made in support of Michener intellectual property research and development, commercialization or company creation activities), subject to approval by the Michener Business Affairs Office; and

(iii) reimbursement of Michener’s costs incurred in a dispute resolution process conducted further to this Policy.

INSTITUTIONAL WORKS

All net revenue derived from institutional works will be retained by Michener (i.e. 100%), and utilized and/or allocated in Michener’s sole discretion by the EVP, Education (or their delegate). Michener may, on a case-by-case basis in its discretion, financially reward and recognize creator(s) of institutional works.

RESEARCH WORKS

  • Remaining revenue after Michener reimbursement (i.e. net revenue) derived from the commercialization of Michener intellectual property based on research works will be distributed 50% to creator(s) and 50% to Michener; however, this distribution is subject to the further terms of this Policy. For clarity, a creator has no entitlement to any equity or other interest in securities held by Michener, and any such equity and other securities held by Michener are solely for the benefit of Michener and for no other person. The sole entitlement a creator has under this Policy is to her/his proportionate share of net revenue payable in cash, when and if actually received by Michener, less any applicable withholdings.
  • The participation of a creator as a “founding” equity holder in a NewCo (“founders” equity in a Michener “spin-out” company) involving their Michener intellectual property does not in and of itself preclude such creator from receiving any further entitlements (e.g. revenue share) under this Policy.
  •  An exception to the “50/50” distribution may arise in certain circumstances, such as when creator(s) receive “founders” equity in a Michener “spin-out” company (a “NewCo”). In such cases, the Michener Office of Intellectual Property will assess the extent of such “founder” shareholding and the further role of the creator(s) in the NewCo (including the mitigation and management of any potential conflicts of interest) so as to determine the scope of any further entitlements under this Policy.
  • As such, the Michener Business Affairs Office may determine that such creator(s) should not receive some or all of the creator(s)’ personal share of net revenue. For example, creator(s) with a significant financial interest and/or managerial role in the NewCo may be required to forfeit in advance some (or all) of their individual personal entitlements under the Policy. the Michener Business Affairs Office shall make a recommendation in this regard to the EVP, Education, who shall make a final determination. In the event of any such revenue forfeiture, Michener will retain the forfeited revenue.
  • Nothing in this policy restricts a creator of Michener intellectual property licensed to a NewCo from entering into a contractual relationship with such NewCo in a personal capacity (e.g. consulting agreement) for compensation involving fees and/or NewCo equity. However, any such contractual relationship will be at the exclusive discretion of the NewCo, and will remain subject to all relevant Michener policies.
  • The creator(s)’ share of net revenues shall be distributed among all creator(s) (if more than one) in the proportion as unanimously agreed to by the creator(s) in writing/email to the Michener Business Affairs Office. An individual creator’s share of revenue shall be based on the relative proportion of her/his individual contribution to the Michener intellectual property that has generated the net revenue.
  • There will be no distributions to creator(s) while any matter under this Policy (e.g. finalization of creator(s) list, determination of creator(s) fractional revenue shares, execution of required intellectual property-related document(s)) is unresolved or pending, which includes any dispute resolution occurring further to this Policy.
  • Creator(s) who leave Michener will continue to receive their portion of net revenue as described in this Policy. In the case of the death of the creator(s), the portion of her/his net revenue will be directed to her/his estate.
  • For purposes of clarity, no revenue will be distributed to creator(s) until Michener has been reimbursed for all of the above noted Michener costs/fees/expenses, and (as applicable) any other reimbursable costs incurred in a dispute resolution process

SECURITIES (E.G. EQUITY SUCH AS COMPANY SHARES)

All securities in third party companies received by Michener in the course of commercializing Michener intellectual property, whether directly or indirectly, shall be held by Michener under the authority of the Director of Finance. Such securities will be managed according to procedures to ensure that decisions are made at arms-length from creator(s) and Michener staff involved in the licensing of the Michener intellectual property. The proceeds from the sale of securities will be treated as gross revenue derived from Michener intellectual property, and will be distributed according to this Policy.

For purposes of clarity, only revenue arising from the liquidation of securities which was specifically received by MI as identified consideration for the licensing or sale of particular Michener intellectual property will be distributed in accordance with this Policy.

MICHENER “SPIN-OUT”/COMPANY CREATION

In the event of a Spin-out company, Michener will conduct ourselves in accordance with the UHN policy and utilize the UHN Commercialization office to manage all processes related to this.

IP ASSIGNMENT BACK TO CREATORS

If Michener declines to protect or further commercialize any patentable (or other protectable) Michener intellectual property, Michener may, in its sole discretion, agree to assign such Michener intellectual property to creator(s) upon request.

In such event, the creator(s) will be required to repay all costs and expenses incurred by Michener in respect of legal, patenting or other Michener intellectual property registration, and Michener will be entitled to twenty five percent (25%) of the “net revenue” derived from any commercialization or exploitation of such assigned Michener intellectual property. As a further condition for such assignment, creator(s) will also be required to agree to additional terms and conditions as may be required by Michener. These additional terms/conditions may include (but are not limited to) the following:

(i) Michener’s retention of a perpetual, irrevocable, sub-licensable (to non-profit institutions/organizations), royalty-free license for research, clinical and educational purposes;

(ii) a requirement to secure indemnity protection for Michener as part of any agreement relating to the assigned Michener intellectual property;

(iii) a prohibition from using MI’s name and logo or being identified in any manner in relation to the assigned Michener intellectual property without prior approval;

(iv) assumption by creator of any governmental or other granting agency or foundation reporting requirement in respect of the assigned Michener intellectual property;

(v) further agreement that any new intellectual property created at Michener (which includes “improvements” to the assigned Michener intellectual property) will be owned by Michener further to this Policy;

(vi) further agreement that, as appropriate, any obligation of creator to Michener will be reflected in any agreement relating to the assigned Michener intellectual property.

DEFINITIONS

Author(s): An individual (including any Michener personnel) who authors copyrighted Intellectual Property (as determined in law).

Confidential information: Confidential information is information that is not generally known to the trade or industry, and that is communicated to others with the intention that it be kept confidential. For example, contracts between Michener and third parties typically invoke the exchange of confidential information. Confidential information is typically owned by the person or company who discloses it in confidence.

Confidentiality disclosure agreement/non-disclosure agreement (CDA/NDA): A legal agreement with Michener and / or non-Michener third party (e.g. company or individual) governing the disclosure and/or transfer and/or exchange of confidential information.

Contract(s): A contract between Michener and an entity (including a for-profit entity) by which Michener (and Michener personnel) carries out a partnership, collaboration, education development, scientific research or technology development-related activities, either on its own or in collaboration with such entity, and where the entity reserves or is granted rights with respect to the Michener intellectual property arising from the contracted service. Examples include sponsored agreements, service agreements, collaboration agreements, or technology development agreements.

Copyright: Copyright exists under statute for an original literary, musical, dramatic, or artistic work. Copyright covers books, articles, conference papers, course outlines, course materials, exams, curriculum, diagrams, flow charts, questionnaires, photographs, computer programs, electronic “courseware”, computer databases, multi-media and audio-visual works, and so on. Copyright includes the right to produce, reproduce, translate, and to perform a work in public, as well as to publish a work if it is unpublished. Copyright does not protect mere ideas or facts. Rather, copyright protects the form of expression by which the ideas or facts are conveyed. For copyright, the general rule is that the author is the first owner of copyright. However, when the author of the work was an employee under a contract of service or apprenticeship, and when the work was made in the course of employment then, absent an agreement to the contrary, the employer will be the first owner of copyright.

Creator(s): Michener personnel identified as (i) an author, (ii) an inventor, or (iii) in respect of licensed Michener intellectual property which is neither patentable or copyrightable subject matter, a significant intellectual contributor to the development of such Michener intellectual property, but only where such development is not a routine or known practice or activity.

Develop(s/ed): To make, create, invent, conceive, control, discover, improve or author, directly or indirectly, and in any manner.

Gross revenue(s): Income directly arising and received from the commercialization of Michener intellectual property, including but not limited to: upfront fees, milestone payments, license maintenance fees, license transfer fees, sublicensing fees, running royalties, advances against royalties, and income received from the liquidation of securities (e.g. sale of equity) or dividend distribution to Michener as a shareholder. For clarity, this aggregate (i) will not include any securities (such as equity or a shareholder position) held by Michener until such time as the securities are liquidated or converted to cash, and (ii) does not include any fees, monies or other consideration received by Michener further to a research contract.

Institutional work(s): All tangible materials and any other outcome, output, result and matter developed by (i)Michener personnel under explicit institutional direction or instruction, or which otherwise arise in the normal course of carrying out assigned responsibilities, duties or tasks of employment; (ii) Michener personnel and for which such development cannot be attributed to discrete creator(s), or is resulting from simultaneous or sequential contributions over time by multiple contributors; (iii) Michener personnel in the normal course of carrying out assigned responsibilities, duties or tasks of employment pertaining to educational and training activities, including, without limitation, all educational and training information, manuals, and associated tools and materials (whether in written, electronic, audio-visual, multi-media or other form or format);or (iv) persons hired by or Michener for a specific purpose (e.g. consultants, contract engineers, software developers). Institutional works may include intellectual property consisting of patent(s), copyright(s), or both. Examples of institutional works may include the following: software and devices developed by Michener personnel hired for such purpose, or at the specific direction of Michener; software tools developed and improved over time by multiple Michener personnel contributors and where authorship is not appropriately attributed to a single or defined group of author(s); Michener research and clinical databases, and other analogous compilations of Michener data and records; educational manuals, courses and courseware, program packages, and any materials developed by Michener further to its educational, training and clinical activities; intellectual property arising from provision of contracted services to external third parties by Michener.

Intellectual property (IP): Inventions (whether or not patentable), technology, technical/clinical/research information, confidential information, trade secrets, know how, trademarks, domain names, URLs, brands, service marks, official marks, industrial designs, databases, formulae, chemical discoveries, computer software and hardware, software code and algorithms, drawings, graphics, designs, concepts, ideas, apparatus, processes, methodologies, research and clinical tools and materials (such as cell lines, antibodies, and other biological materials and reagents) and other tangible research/clinical property (e.g. questionnaires), prototypes, devices, and other literary and artistic works (such as patient-related or educational manuals, program packages and materials), and all associated intellectual property rights (such as, for example, letter patents, copyright, and design patents/registered or industrial designs).

Inventor(s): Any individual (which includes any Michener personnel) who makes an inventive contribution to the creation and/or development of patentable intellectual property (as determined in law).

Material transfer agreement (MTA): A legal agreement that governs the transfer of research material (e.g. compound, antibody, microarray, purified protein, cell line, cloned gene, recombinant mice, human tissue/sera) or equipment from Michener to another non-Michener entity or individual (and vice versa). The agreement names the sender and the intended recipient, specifies the nature of the material/equipment transferred, and establishes ownership and the constraints on its use, including a descriptor of permissible activities to be performed with the transferred material/equipment.

Michener: The Michener Institute of Education at UHN as a legal entity.

Michener Business Affairs Office: The designated office at Michener assuming primary responsibility for the management of matters related to this policy, and for financial, legal and related commercialization activities associated with Michener intellectual property such as patent protection and prosecution, business transactions (including research contracts, option agreements, license agreements, company agreements, financial agreements) and management of the commercial assessment, business development, marketing, and financial compliance related to such intellectual property. UHN TDC and UHN Legal may be consulted or their service purchased to assist with this office and the work generated.

Michener Intellectual Property: Any Intellectual Property (i) developed by Michener personnel utilizing in any manner, whether directly or indirectly, Michener resources, or (ii) otherwise arising through access to, or the use of Michener resources in any manner, whether directly or indirectly, but does not include traditional academic works. For clarity, Michener intellectual property includes research works and institutional works.

Michener personnel: Any employee and investigator of Michener (whether education, research, clinical or otherwise); clinical staff and other persons (e.g. adjunct staff) with Michener appointments; persons with contractual arrangements with Michener (e.g. consultants, contractors; research and clinical trainees, such as under- and graduate students, post-doctoral fellows, visiting scientists or other visitors using Michener research facilities; and / or Michener volunteers; visiting investigator(s) and clinical staff on leave, seconded, or on sabbatical from another institution to Michener; any other person who has any access to or uses, in any manner, directly or indirectly, Michener resources for teaching, research and/or development purposes or otherwise. For clarity, Michener personnel includes Michener-associated individuals who are also cross-appointed to non-Michener institution.

Michener Resources: Owned, operated, managed, funded or administered by Michener: salaries, research chairs, stipends, student fellowships, research grants and funds, technology development grants and funds, equipment, research/clinical tools and reagents and materials (including humans tissue/sera sourced, stored or banked at Michener), assets, facilities (whether research, clinical or educational), personnel/clinical staff/research and clinical trainees, other monies and funds, software, research/clinical databases and information, medical records, and Michener intellectual property, and further includes access to patients and treatment areas of Michener, and / or Michener facilities.

Moral Rights: Moral rights exist under statute for the author of an original work. An author has the right to the integrity of the work and, where reasonable in the circumstances, to be associated with the work as its author, by name or under a pseudonym, or to remain anonymous. These rights cannot be assigned, but can be waived in whole or in part.

Net revenue(s): Gross revenues minus, in order of priority: (i) reimbursement of out-of-pocket costs and fees incurred by Michener associated with securing, maintaining, and enforcing intellectual property protection, such as patenting and litigation expenses; out of pocket costs incurred by Michener in the commercialization of the intellectual property such as expenses for marketing, commercial assessment, financial valuation, advisory services, agency fees, and the management and liquidation of securities (such as equity); and out of pocket expenses in making, shipping or distributing material; (ii) reimbursement of defined costs and expenses incurred by Michener related to the technical/scientific or commercial development of the licensed Michener intellectual property (including, but not limited to, debt instruments, loans, and other investments made in support of commercialization or company creation activities), subject to approval by the Office, EVP of Education; and (iii) reimbursement of costs incurred by Michener in a dispute resolution process conducted further to this policy.

Partner(s): Any entity, corporation, partnership, person, association, granting agency, government or other legal body/person with whom, in any manner, any service or development, of any nature, is performed or intended to be performed, on any basis.

Research contract(s): A contract between Michener and an entity (including a for-profit entity) by which Michener (and Michener personnel) carries out scientific research or technology development-related activities, either on its own or in collaboration with such entity, and where the entity reserves or is granted rights with respect to the Michener intellectual property arising from the contracted research. Examples include sponsored research agreements, research service agreements, research collaboration agreements, technology development agreements, research grants from traditional grant-funding agencies (e.g. Canadian Institutes of Health Research, National Institutes of Health) and clinical trial agreements.

Research partner(s): Any entity, corporation, partnership, person, association, granting agency, government or other legal body/person with whom, in any manner, any research or development, of any nature, is performed or intended to be performed, on any basis.

Research work(s): Tangible materials and any other outcome, output, result and matter developed by Michener personnel arising from independently conceived and self-directed fundamental experimental research or technology development activities, or other basic discovery or analogous research activities, and which are not institutional works or traditional academic works. Research works may include IP consisting of patent(s), copyright(s), or both.

Trademarks: Trademarks exist under statute and at common law, and protect a name, word, design, logo, etc., that distinguishes one person’s product, service or business from the product, service or business of another person or company. For example, a new name for a course, book, or audio-visual work may be a trademark.

Traditional academic work(s): Any work of authorship made for a scholarly purpose; such as scholarly papers, books, book chapters, theses, abstracts, presentations, whether or not published and whether or not distributed by any means, including print or electronic media.

UHN: The University Health Network.

UHN Commercialization Office (Commercialization@UHN): The designated office at UHN assuming primary responsibility for the management of matters related to UHN’s Intellectual Property policy, and for financial, legal and related commercialization activities associated with UHN intellectual property such as patent protection and prosecution, business transactions (including research contracts, option agreements, license agreements, company agreements, financial agreements) and management of the commercial assessment, business development, marketing, and financial compliance related to such intellectual property. Commercialization@UHN may be leveraged to support activities at Michener in the Business Affairs Office.

UHN personnel: Any UHN employee and investigator (whether research, clinical or otherwise); clinical staff and other persons (e.g. adjunct staff) with UHN medical, hospital or educational appointments; persons with contractual arrangements with UHN (e.g. consultants, contractors); UHN research and clinical trainees, such as under- and graduate students, post-doctoral fellows, visiting scientists or other visitors using UHN research facilities; UHN volunteers, visiting investigator(s) and clinical staff on leave seconded or on sabbatical from another institution to UHN; any other person who has any access to or uses, in any manner, directly or indirectly, UHN resources for teaching, research and/or development purposes or otherwise. For clarity UHN personnel includes all UHN-associated individuals who are also cross-appointed to a non-UHN institution.

Revision History

Date Reviewer Change(s) Made
March 3, 2004 document created
February 2, 2011 Robin Darling HR-016 transferred to new policy template
November 18, 2021 UHN Legal and Michener Project Team (Karen Chaiton, Juanita Richardson, Dimitra Labrakos) policy revised to to reflect UHN integration and revised policy approved