Frequently Asked Questions (FAQs)
An invention disclosure is a written description of your invention, idea, tool or concept in our template Confidential Invention Disclosure Form (CIDF). The CIDF has several questions that will help the TTO understand your invention better and help with decision making. It is very important to disclose your inventions well before you publish, especially if you are interested in filing a patent. You can find the CIDF template on Sunnynet or please reach out techtransfer@sri.utoronto.ca for the word version of the CIDF.
If you have a presentation, a draft manuscript or any such write up available, please append it to the CIDF. Such documents help the TTO understand your invention. It also helps with any patent drafting and filing activities.
We highly recommend disclosing your discovery or invention to the TTO if you believe that it covers a gap in the field, or solves a significant problem, or if there is potential commercial value. We encourage submitting a disclosure as early as possible as it allows time for assessment of the technology and its potential, and also determine any ownership issues.
The TTO will reach out to you to discuss the disclosure, and we may invite you to come talk about the technology at the internal committee meeting. This internal committee makes decisions on all disclosures that are submitted to the TTO. It comprises of VPRI and other senior scientists apart from the entire TTO.
We highly encourage our researchers and clinicians to discuss their discovery or idea with the TTO, even if the discovery or idea doesn’t fall within the typical scope of a patent. There are several other means of protecting any intellectual property associated with your discovery. The TTO can advise regarding submission of a disclosure after such a discussion.
All Intellectual Property developed at Sunnybrook is owned by Sunnybrook, especially if IP is developed using Sunnybrook resources such as use of Sunnybrook facilities.
Disclose your invention to the TTO, no matter the stage of the technology. All inventions or possible IP must be disclosed to the TTO.
TTO will assess the technology disclosed to see if Sunnybrook is interested in taking the idea forward or not, and possibly, apply for a patent. In the event, Sunnybrook is interested and files for IP protection then all costs are borne by Sunnybrook.
It is imperative that all external collaborators/scientists are disclosed to the TTO so that we can work on getting suitable agreements in place with those organizations to govern the administration and commercialization of that invention.
The inventors should also disclose if the development of the invention was funded through funds or grants by an industry partner or company, as IP obligations under agreement(s) with the industry partner may apply to the invention.
Yes! Any revenue (cash or non-cash) that comes in split as below:
- 40%: Inventors (we ask you to submit a revenue distribution form at the time of disclosure)
- 40%: Sunnybrook
- 20%: Program and/or Platform the inventors are from
It is critical that you have discussions with the TTO and/or disclose your invention well in advance of any submission of a publication (including papers, presentations, abstracts etc.), as patent rights are affected by prior publication of an invention. Not all countries allow submission of a patent if a paper or a presentation has been published already. Please inform the TTO of any imminent presentations, publications, speaking assignments so that we are able to file a patent, if applicable, prior to public disclosure of the invention.
If you are exploring development of a technology with an academic partner or an industry partner, it is crucial that you sign an NDA with the partner before taking the discussions forward. This will avoid any difficult conversations in the future as far as IP is concerned. They would be bound by confidentiality and your idea will remain yours.
If you are exchanging any material with the collaborator for your research, then you may need a Material Transfer Agreement (MTA) to help facilitate the transfer of that material. This requirement also applies to exchange of any data between the parties. In such a case, you may need a Data Transfer Agreement (DTA).
All Sponsored Research Agreements (SRAs), Collaboration Agreements & Research Contract Agreements have provisions related to IP. These provisions may grant a sponsor rights to license, option or own some of the IP that is developed depending on the research plan of that particular collaboration.