In this policy “Invention” refers to new and useful tools, technology, processes or objects arising out of research funded in whole or in part by Cystic Fibrosis Canada (formerly known as the Canadian Cystic Fibrosis Foundation), for example, diagnostic tools, proteins and genes, drugs, and methods of treatment.
The Institution and the Principal Investigator shall within 10 days provide Cystic Fibrosis Canada with a copy of any Invention disclosure statement or record of like effect prepared by one or both of them, and with a copy of all patent applications and patents pertaining to Inventions made by one or both of them. In the event that none of the foregoing documents has been prepared, the Principal Investigator shall provide Cystic Fibrosis Canada with a statement of the results of research funded in whole or in part by Cystic Fibrosis Canada upon conclusion of such research.
Cystic Fibrosis Canada does not claim intellectual property ownership of Inventions, and Cystic Fibrosis Canada’s name need not appear on patent applications. Therefore, title to any Invention shall belong to the Institution, the Principal Investigator, or to any other individual or organization designated by the Institution according to the Institution’s established obligations at the date of grant (the “Owner”). The Institution and Principal Investigator may transfer ownership of the intellectual property only to persons agreeing to be bound by the terms of this Policy.
The Institution and the Principal Investigator shall acknowledge the contributions of Cystic Fibrosis Canada, by name, to their research in all non-commercial publications and broadcasts respecting Inventions. None of the Institution, the Principal Investigator and the Owner shall use the name of Cystic Fibrosis Canada or any Cystic Fibrosis Canada trademark or official mark in any communication in a manner which states or implies an endorsement by Cystic Fibrosis Canada of any business, commercial product or service.
Cystic Fibrosis Canada expects that the Owner will seek patent protection for all commercially valuable Inventions in at least the United States of America, and that Cystic Fibrosis Canada will participate in all proceeds to the Owner arising from the transfer, licensing or exploitation of the Inventions (the “Proceeds”) while the patents remain pending or in force. The “Proceeds” shall include all monies and other benefits received less the direct out-of-pocket costs associated with patenting the Invention. Cystic Fibrosis Canada will consider waiving all or part of its share of the Proceeds where appropriate to promote the treatment, cure and control of cystic fibrosis.
Cystic Fibrosis Canada’s share of the Proceeds shall be determined by the mutual agreement of the Owner and Cystic Fibrosis Canada. If the parties are unable to agree, Cystic Fibrosis Canada’s share of the Proceeds will correspond with the proportion of Cystic Fibrosis Canada’s financial contribution to the overall costs of the research leading to and commercialization of the Invention. If Cystic Fibrosis Canada and the Owner are unable to reach an agreement as to the calculation of such proportion, the matter shall be referred for final resolution to arbitration, in accordance with the Arbitration Act, S.O. 1991, as amended.
Cystic Fibrosis Canada may require the Owner or any successor in title to the Invention, and patents pertaining to it, to grant licences to make, use or sell the Invention on a non-exclusive, royalty-free basis for academic, non-commercial research which in Cystic Fibrosis Canada’s sole judgement may lead to a treatment, cure or control for cystic fibrosis.
The Owner shall require that any transfer or exclusive license of the Invention or patents pertaining thereto reserve the rights in paragraph “G” above and the rights in paragraph “I” below.
Cystic Fibrosis Canada shall have the right to cancel or amend any licenses which have been granted, and to grant exclusive or non-exclusive licenses to the Invention, where an Owner or licensee subject to cancellation has (i) taken no steps to towards making the invention generally available for the past year, or (ii) not made the Invention generally available within five years of the date of making the invention, or within such further time as may be required to complete necessary antecedent steps such as clinical trials. Cystic Fibrosis Canada will consider waiving or revising its rights under this section in appropriate circumstances.
The Owner shall report in writing to Cystic Fibrosis Canada annually, on the anniversary date of the first patent application respecting an Invention, as to all Proceeds received or expected by the Owner respecting the Invention. Cystic Fibrosis Canada shall have the right to audit the books and records of the Owner and those of any licensees of the Invention to verify the accuracy of the reports.