NRC's general Intellectual Property (IP) policy

I. Purpose

The purpose of this document is to provide a clear explanation of major features of NRC's IP Policy for organizations or individuals interested in working with NRC as well as for NRC employees. The NRC IP Policy applies to all IP NRC generates and acquires and to all People who work for NRC.

II. Principles

First and foremost, NRC will manage its IP for the benefit of Canada. NRC considers that the most significant benefits to Canada arise from operations and activities occurring within Canada, employing and training Canadians, and contributing to the development of Canadian communities, and improving the health and wellness of Canadians. To this end, NRC will make decisions so as to allow effective and efficient translation of its research outcomes into Canadian commercial strength, thereby building technological capacity and strengthening the overall Canadian economy. Additionally, NRC will seek opportunities to positively impact the quality of life for Canadians in fulfilling its obligations towards public good.

While this means NRC will place less regard on generating financial returns to itself, NRC will still expect a fair and business-like return on its contributions and activities with clients.

NRC will pursue the following objectives as contributing to its goal of providing benefits to Canada:

Responsiveness: NRC will be responsive in meeting the current and future needs of Canadians and Canadian Industry. NRC will seek and identify areas of importance within the realm of science and technology and focus its resources towards such opportunities for Canada.

Accessibility: NRC desires to work in cooperation with other organizations to efficiently provide benefits to Canada. NRC will work with those clients best positioned to exploit NRC technology for the benefit of Canada.

Flexibility: NRC recognizes that clients and Institutes operate in different and unique environments and will aim to be flexible to enable timely technology transfer.

Transparency: NRC wants to develop and communicate IP management approaches and policies which are transparent, straightforward, and clearly defined for People who work for NRC, our clients and collaborators. NRC will also ensure that appropriate training is provided to its employees to allow them to carry out their roles.

Fairness and Consistency: NRC is committed to dealing with external organizations in a manner which is fair and consistent. This includes ensuring consistent management of IP among NRC's institutes and activities.

Standing Behind Our Rights: NRC will enforce its IP and contractual rights when and where it deems it appropriate.

III. Authority of NRC's president

The President of NRC in implementing the objectives of the IP Policy holds his authority under the National Research Council Act and through the transfer to NRC by the Minister of Industry under the Public Servants Invention Act of administration and control of NRC inventions and patents. Disposition or assignment of IP rights, such as copyright, over which the President has no authority, requires an Order in Council under the Financial Administration Act.

IV. Ownership, disclosure, protection and risk management

IP Ownership and disclosure

All IP, including inventions and know-how, whether patentable or not, created by People who work for NRC including inventions made by NRC employees while acting within the scope of their duties or employment or made with facilities, equipment or financial aid provided by or on behalf of the NRC will vest with the Crown, and NRC has full authority to license, sell or otherwise deal with such inventions and know-how.

NRC employees are obliged to file an invention disclosure statement with the appropriate business office using the Public Servants Inventions Act "Form 1" document within one month of any invention arising from their work, including the creation of software, and to execute all requested documents relating to assignment and protection of IP rights in any of his or her work for which ownership vests in the Crown.

NRC is entitled to require that all Disclosure of the work and results thereof, performed by students as People who work for the NRC when engaged in research within NRC facilities or under supervision of an NRC employee, be delayed up to a maximum of six months from the filing of a written invention disclosure ("Form 1") naming the student as an inventor. This delay will be used to permit NRC to assess the commercial potential of the work and to seek protection as it may, in its sole discretion, deem appropriate.

Nothing in this policy detracts from the freedom of former People who work for NRC to use non-legally protected skills acquired while working at or with NRC and professional judgment in future projects with other organizations, provided that the individual complied fully with the disclosure provisions of the Public Servants Inventions Act, the applicable government Policy(ies) while with NRC, maintains any confidentiality obligations under applicable agreements and in the case of an NRC employee continues to comply with the terms of any post-employment obligations under NRC's Conflict of Interest Code.

Disclosures (by publication or other means)

People who work for NRC must obtain advance approval for Disclosure whether by publication or by other means. With respect to publications, researchers must also adhere to the NRC Research Publication and Authorship Policy. DGs have the authority for approving all forms of Disclosure and some, but not all, publication agreements. DGs will set up a transparent, fair and rigorous process to review material for Disclosure that reflects the goals of the IP Policy and any related contractual obligations. The process could take the form of an IP committee with representation from the institute Business Development Office. While this approach represents the default desired, it is recognized that lower level, less formal forms of Disclosure may be authorized at a delegated level within the institute such as a Research Director.

Confidentiality (non-disclosure) issues

NRC is committed to preserving valuable IP rights as required to ensure the maximum benefit to Canada from its activities. One key aspect to this commitment is the careful and appropriate use of Non-Disclosure (Confidentiality) Agreements for all disclosures of confidential information which is not yet the subject of a formal published patent application.

NRC will normally require that a Non-Disclosure Agreement (NDA) be signed prior to any confidential information being disclosed whether orally or in writing. The NDA should be signed on behalf of each party by an individual with real authority and control over all those who may come into possession of any part of the confidential information and will restrain any further use of the information, other than that agreed upon in the NDA, except with the written agreement of the disclosing party.

NRC requires that all persons other than NRC employees who will be physically present within NRC facilities including an NRC research laboratory or researcher's office, or who will be in a position to learn details of NRC technology which has not been made public or the subject of a filed patent application, agree in writing, as a precondition of accessing NRC facilities or learning of the information, that all NRC technology and know-how will be kept confidential and not discussed or used for any purpose without prior written permission.

Protection of IP

At NRC, IP protection ordinarily takes the form of patent and/or copyright protection; however, trade secret protection is also possible. Protection in the form of Trade-Marks, Official Marks, Certification Marks, Copyright registration, Plant Breeder' Rights, Industrial Designs and Integrated Circuit Topographies, are also available.

V. Types of agreements

Service agreements ("Fee-for-Service" or "FFS")

As used herein, a Service Agreement is any agreement where NRC agrees to undertake research or provide services under terms generally requiring that the entire cost of the project and related activities be fully paid for by a client, including all overhead and administration costs. Any Service Agreement in which the client is not entirely covering all direct and indirect costs will be treated as a waiver of fees and must abide by the guidelines and policies set by Finance Branch, under the Financial Administration Act (FAA). As agreements involving waiver of fees involve greater taxpayer investment in the work, it is expected that NRC will be recovering something of value from the agreement. When selecting which Service Agreements to engage in, Institutes will consider the benefits of the contract to the knowledge base within NRC, including: opportunities to expose employees to client needs, expertise and equipment, and other such benefits to either the NRC or to Canada in general.

NRC will own the Arising IP and clients may negotiate to own a portion of the IP arising from the FFS agreement, such IP is to be clearly identified within the deliverables and NRC will always retain the right to use all 'deliverable IP' for internal research purposes. NRC will retain ownership of the NRC background knowledge, processes or other forms of NRC Background IP NRC brings to bear in the project or uses in order to perform the contracted service. Distinguishing clearly in the FFS agreement between Background IP and Arising IP is therefore important.

Collaborative research agreements

Collaborative research activities can take on various forms and associated terms. NRC and the collaborator(s) (academic, private and/or public organizations) may share costs and may have personnel working on the same project. While the licensing/ownership terms are negotiable by the parties involved, in light of the IP Policy, the typical NRC arrangements are as follows.

• Background IP and any access required for the research project are to be negotiated up-front. The need for access to Background IP for purposes other than the research project may be offered through a separately negotiated license agreement.

• Arising IP that is developed solely by a party's employees is typically owned by that party alone with a license being provided to the other party(ies), subject to negotiations.

• Jointly developed Arising IP is an area where NRC has encountered challenges in the past and has developed options to facilitate efficient management. Jointly-owned IP is possible but is discouraged because it is often challenging and time-consuming to manage.
• Alternatively, parties may agree up-front to terms providing for the assignment of jointly-developed Arising IP to one party. In the case where NRC agrees to assign, the standard assignment process and considerations under the IP Policy would apply. In the case where a client (or more than one client) assigns to NRC, then a license would normally be negotiated for access to the IP for exploitation by the client(s).

• In order to facilitate all IP-related management issues, NRC employees must comply with their Institute's policies and practices around collaborations and provide the Institute Business Office an outline of any proposed collaborative research project.

Contracting-out (Procurement)

In general, where NRC contracts with an outside organization to conduct research or other services for the NRC through a Crown procurement contract, NRC will abide by the Treasury Board policy regarding Title to Intellectual Property arising under Crown Procurement Contracts where, unless the NRC elects to own the arising IP pursuant to one of the exemptions in the policy, the contractor will own the IP from such work. When the contractor owns the arising IP, NRC will ensure NRC has the right to use the deliverables and a royalty-free license to use the arising IP for all Government of Canada activities, including future contracts and procurements. The right to sublicense for the other purposes can be negotiated on a case by case basis.

Contribution arrangements

NRC is involved in contribution agreements through its Industrial Research Assistance Program (IRAP). The provision of IRAP support to an applicant will not trigger IP rights to flow to NRC under the contribution agreement.

In the case where the recipient of the contribution engages NRC to perform some, or all, of the research supported by the contribution, the IP ownership shall be negotiated and agreed to in a separate agreement, irrespective of the source of funds.

License agreements

It is the objective of all NRC licensing activities to maximize the benefits to Canada from the subsequent development and exploitation of the IP being licensed. NRC's usual approach is to grant non-exclusive rights to IP rights; however, sole licenses may also be granted. Regardless of the scope of the licence, diligent exploitation of the licensed technology will be required within a reasonable period of time as set forth in the terms of the license agreement. NRC will retain the right to audit compliance with any and all agreement terms at its discretion and to modify or revoke the licence for a breach of licence terms.

Assignment of IP rights

In certain circumstances, IP may be transferred to an NRC inventor(s), to a company as part of a technology transfer negotiation, or to a third party as part of a sale of the IP, using the appropriate assignment agreement and procedures. Each request for assignment case will be given due consideration on its own merits and may be conditional to certain obligations being met by the potential assignee. All assignment requests must be submitted to the President for approval. The President of NRC has the authority to assign all NRC IP, other than copyright.

All assignments shall include as an essential term, incorporated into the text of the agreement, a perpetual, irrevocable, royalty-free licence to the NRC and all other Canadian federal government laboratories, providing the right to use the IP within their facilities for all purposes.

VI. Enforcement of IP rights and agreements

NRC will vigilantly enforce its statutory and non-statutory IP rights. While reasonable efforts will be made to resolve issues through discussions and other means such as mediation or binding arbitration, litigation may be employed.