• The Joint Intellectual Property Policy: Applies to IP created by faculty, staff, and researchers.
• The Copyright Ownership and a Policy Framework for Licensing Instructional Material: Applies to teaching staff (instructors) and non-teaching staff hired to produce instructional materials.
• The Ownership of Student Work Policy: Applies to student-related IP created by graduate students while at McMaster.

This means that multiple people will be involved with determining how the IP is used and commercialized. When disclosing an innovation to MILO, there will be an opportunity to identify both authors (contributed to formulation of IP) and participants (only engaged with instruction or protocol in IP development). Additionally, it will be possible to determine how revenue is distributed among contributors. To avoid confusion/conflict over ownership, roles, and revenue distribution, it is highly recommended to document and agree (in writing) on such things before working on a project.

You are only required to contact MILO once you can disclose your innovation (see below FAQ), however, it is strongly recommended to contact MILO at any time to ask questions, get advice, or assess your situation. Remember, MILO is here to help you regardless of how or if you choose to commercialize your research.

If you are looking for specific advice or feedback, please check out MILO’s staff directory to connect with one of our experts. Otherwise, you can contact our associate director of business development and IP or learn more about us on our website.

Acquiring certain IP protections (such as patent or trade secret protection) can be impacted by public knowledge of your invention. Acquiring patent protection may be more difficult and, in many jurisdictions, impossible if public disclosure occurs before an initial filing date. Trade secret protection is most often lost outright. Even if public disclosure has reduced the value of your innovation, it is not necessarily too late to protect it. In this case, contact MILO as soon as possible to discuss your options and seek protection for your IP. For this reason, it is always recommended to contact MILO for advice or input before disclosing your intellectual property. We can advise you and discuss options to ensure that your IP does not accidentally lose its value.

If you decide you want to commercialize IP you have created, you must first disclose the IP to the university. A disclosure is a formal notice of your innovation and is submitted to the university through MILO. To submit a disclosure, you must fill out and submit a disclosure form to be reviewed:

You should disclose IP to the university as soon as you are able: Usually when you have a clear design or representation of such IP, as well as supporting data with documentation. The earlier you disclose IP, the earlier you can identify ownership, secure protection for it, and identify commercial applications. It is always recommended to disclose IP to the university before you expose or exploit IP publicly in any way.

All disclosures to the university are confidential.

You will disclose to both institutions, using the respective procedures for IP disclosure. Often, this will result in the use of an Inter-Institutional Agreement (IIA) or similar legal agreement regarding how the IP is to be commercialized/used between the universities.

According to the Joint Intellectual Property Policy, there are two primary routes for commercializing IP created at McMaster:

• The IP creator decides to commercialize their IP on their own, and ownership of the IP is assigned to them from the university. McMaster will receive some revenue generated from commercializing the IP (usually around 25%).
• The IP creator wishes for the university to manage commercialization of their IP (through MILO) and McMaster retains ownership of the IP. The revenue will then be shared evenly between the creator (50%) and the university (50%).

Furthermore, there may be the possibility of forming a startup company based on the potential of a creator’s IP. A researcher’s role in commercialization can be minimal or substantial, depending on the method of commercialization. For more information, refer to lesson 1.12 and 3.1.

A researcher’s most crucial role while commercializing their IP is as the expert of their innovation. The researcher will be expected to identify, describe, and communicate their knowledge of their IP. Regardless of whether the researcher chooses to commercialize on their own or through MILO, they will be expected to provide detailed insight of their IP throughout the whole process. In addition to this essential role, a researcher must also help to identify commercial potential, extensions, and applications of their IP.

A researcher’s full responsibilities may vary greatly depending on the method chosen to commercialize the IP.

If the IP is owned solely by the creator, revenue is distributed based on McMaster’s Joint Intellectual Property Policy, between the creator and McMaster (evenly split if commercialized through MILO).

A research sponsor may request a portion of the revenue in a sponsor agreement. If so, revenue is often split between the party receiving funding and the sponsor based on that agreement.

If multiple creators are associated with an IP, then the revenue is usually distributed based on a prior written agreement (produced before working on the IP).

If another institution is involved, then revenue is split based on an agreement between those institutions.

It is important to understand these legal agreements to ensure that all parties are fairly compensated for their contributions and involvement in commercializing IP.

Often, researchers/inventors at McMaster may have their own industry contacts who are associated with or otherwise interested in the work being done by that person. These are often valuable potential licensees. Additionally, McMaster has a large network of industry contacts and a suite of diverse startups. Furthermore, following disclosure, MILO will perform market research on any IP with commercial potential to assess which company can best utilize the IP. This way, MILO can connect with a trusted company with great potential for commercializing your IP.

MILO encourages inventors to recommend potential licensees, provide input for assessing technical and market feasibility, and offer suggestions on licensing strategies to commercialize the technology. MILO will always consider inventors’ feedback and strive to keep inventors informed. When an inventor is also a founder, the best practice is for MILO to negotiate agreements with a founder who is not also a McMaster inventor.

This time it takes to license a technology varies. After the technology is disclosed to MILO, it could take several weeks to a few months to review the invention and then apply for a patent application (if appropriate). During this time, the entrepreneur(s) could begin to develop the new venture (develop a business plan, seeking investors, etc.). Negotiations with MILO for a license could take days, weeks, or months depending on the terms agreed upon.

License agreements have both financial and non-financial terms. These vary based on the technology, the stage of development, the field of use, and the commercialization risk.

Typical terms consist of:

• Financial terms for patented intellectual property may include annual fees, milestone payments, and royalties on product sales.
• Financial terms may also include a small, minority share of equity in the company.
• Exclusive licensees are generally expected to pay patent expenses.
• Diligence terms to ensure reasonable progress in growing the company and commercializing the invention.

McMaster reserves the right to protect its own inventions for research purposes. However, to develop technology at McMaster for the benefit of the startup, the researchers must follow McMaster’s conflict of interest policy.

A conflict or potential conflict of interest exists when an employee of the University is or may be able to use authority, research, knowledge, or influence for personal gain or to benefit others to the detriment of the Institution. To learn more, read McMaster’s conflict of interest policy.