Report of Invention—CONFIDENTIAL
Submission Instructions
Please read all instructions before completing the form.
A. Submission Instructions:
1. This form is ONLY for University of Alberta employees and students. (If you are not an
employee or a student of the University, please obtain the TEC Edmonton External Inventor
Questionnaire.)
2. Please answer questions and provide as much information as possible.
3. All inventors must sign and send an original form to:
(by regular mail)
(by campus mail)
TEC Edmonton
4000 TEC Center
10230 Jasper Avenue
Edmonton, Alberta T5J 4P6
TEC Edmonton
4000 Enterprise Square
Mailstop Code: 625
B. For assistance or more information:
If you require additional information about this form, your obligation to disclose inventions, or if you
would like to consult with our staff before completing this form, contact a Technology Transfer team
member at TEC Edmonton (visit www.TECedmonton.com and select “Contact Us”).
The personal information requested on this form is being collected under the authority of Section 33(c) of the Alberta Freedom of
Information and Protection of Privacy Act for the purposes of reporting an invention. Certain information may be made available to federal
and provincial departments and agencies under appropriate legislative authority. Questions concerning the collection, use and disposal of
this information should be addressed to the CEO, TEC Edmonton, 4000 TEC Centre, Enterprise Square, 10230 Jasper Avenue,
Edmonton, Alberta, T5J 4P6; telephone: (780) 492-8977; fax: (780) 492-7876.
Updated August 20, 2009
Inventorship Summary
What Is A Patent?
A patent is a legal document issued by the state, that gives an inventor the
right to exclude anyone else from making, using, or selling an invention for a
specific period of time, usually 20 years, in the jurisdiction it is granted.
Purpose Of A Patent
The purpose of a patent is considered two-fold. First it is a grant of rights to
create a monopoly in order to provide incentive for innovation, reward
creative effort, and protect investments. Second, it makes public recent
scientific discoveries that promote the development of new technology and
new products for the benefit of society.
Term Of A Patent
Patents generally have a term of 20 years which is generally measured from
the filing date. After the 20 year period the patent becomes part of the public
domain.
Patentability Requirements Of An Invention
Novelty: Since a patent is a grant of a monopoly in exchange for disclosure,
the invention must be new to the world. While in academia it is “publish or
perish”, in the patent world it is “publish and perish”. A publication is
considered to be a single disclosure that would leave no inventive step for a
person skilled in the art to replicate the invention. If the invention has been
described anywhere in the world prior to filing a patent application a patent
cannot be obtained. In certain jurisdictions, a grace period may exist.
Non-obvious: The requirement of non-obviousness is based on the
perspective of one skilled in the art. If the invention is obvious to someone
skilled in the art, then it is not patentable. Even if the subject matter sought to
be patented is not exactly shown by the prior art, and involves one or more
differences over the most nearly similar thing already known, a patent may
still be refused if the differences would be obvious.
Useful: This requirement has a low bar. Generally, an invention will fail for
the following reasons. First, an applicant can fail to identify any specific
utility for the invention or fail to disclose enough information about the
invention to make its utility immediately apparent to those familiar with the
technological field of the invention. Second, the applicant's asserted utility
for the invention is not credible. An assertion regarding utility is credible
unless: (1) the logic underlying the assertion is seriously flawed; or (2) the
facts upon which the assertion is based are inconsistent with the logic
underlying the assertion. Because the patent is a disclosure in exchange for
granted rights, the description must be enabling. Therefore, a patent may also
fail in the USA if the ‘best mode’ has not been described.
Inventorship Versus Authorship
The requirements for inventorship and authorship of an academic paper are
not the same. Authorship is determined by academic custom while
inventorship is a legal issue giving rise to property rights relating to the
practice of an issued patent. Like joint-authorship, it is possible to be a jointinventor. However, because authorship is more expansive than inventorship,
it is probable that the list of co-inventors does not include all of the coauthors.
Importance Of Inventorship
Entire industries may be built on the basis of a single patent and the potential
financial benefits may be considerable. A patent is a tool that enables
inventors to defend their market position by preventing others from using or
selling that invention from another source. This enables investors to profit
from their investments. A rule of thumb is that an inventor can be defined by
someone who is the first to contribute to the conception and reduction to
practice of one or more of the claims in a patent application or patent. As
previously mentioned, those named in a patent are granted a property right.
The inappropriate naming of an inventor on a patent may be grounds for the
court to invalidate the patent. Therefore, the standard of inventorship is high.
An inventor’s contribution must relate to at least one claim in the patent
document.
Compensation For Contributions
While individuals that have contributed to an invention may not be inventors,
there may be a desire to share in revenues from the invention. Similarly, the
contributions of inventors may be disproportionate and they may wish to
divide future benefit in less than equal portions. These issues should not be
resolved by the addition or removal of people as inventors on a patent
application but instead should be rectified under contractual agreements to
share future revenues.
Some Types Of Qualifying Contributions
Generally an intellectual contribution that reaches the inventorship standard
must meet at least one of the three requirements: novelty, non-obviousness,
or usefulness. If the contribution results in a patentable claim then it may
qualify as inventive, however, each fact situation must be evaluated on its
own and in light of then-current state of the law.
Contemporaneous Contributions: typically from discussions or other
interactions in the course of which several persons stimulate the thoughts of
the others, thereby progressing their combined ideas towards the final
conception as reduced to practice.
Sequential Contributions: when an incomplete conception is subsequently
completed as a result of the contribution of another, then the person that
provides the reduction to practice through the further exercise of inventive
skill is an inventor.
Conception of Utility: a mere discovery in itself is not patentable. It is not an
invention until a utility has been found for the discovery; therefore, the
person that conceives of the original use, or further uses, is an inventor.
Some Contributions That Do Not Qualify As Inventive
Generally, contributions that are obvious or lack novelty do not qualify, for
example, identification of what needs to be accomplished versus how to
accomplish it and implementation (reduction to practice).
Work done at the instruction of another that did not require “inventive” skill
(technician). Examples:

Providing data bearing on the uses or properties of the invention
disclosed in the application.

Mere optimization of known parameters versus the
discovery/addition of a new parameter. However, an unexpected
improvement from optimization may qualify.

Verification of previously anticipated findings.
Inventorship is not a reward for financial or resource contributions to a
project.
Best Evidence of Inventorship
The best evidence is a properly maintained lab book or other written
documentation that has been reviewed, signed, and witnessed by someone
independent of the research team, skilled in the art, and done with
confidentiality in mind.
Still Unsure Whom To List As Inventors
Feel free to raise this matter with a Technology Manager at TEC Edmonton
who would be pleased to discuss inventorship and the particulars of your
Report of Invention in detail.
______________________________________________________________
Additional Resources
http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_ownership-e.html
www.fenwick.com/docstore/publications/IP/IP_Articles/Correct_Inventorshi
p.pdf
http://www.inventionprotection.com/ip/publications/docs/A_Primer_On_Lab_Notebooks.html
Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153, 2002 SCC 77:
http://www.canlii.org/ca/cas/scc/2002/2002scc77.html
Burroughs Wellcome Co. v. Barr Laboratories Inc., 32 U.S.P.Q. 2d 1915
(Fed. Cir. 1994)
http://www.law.uh.edu/healthlaw/law/FederalMaterials/FederalCases/Burrou
ghsWellcomevBarrLaboratories.htm
www.vtip.org/MEMO_INVENTORSHIP.pdf
www.needlerosenberg.com/Library/w125248.doc
http://www.bios.net/daisy/bios/205.html
PAGE 1 of 7
Report of Invention—CONFIDENTIAL
One of our technology transfer representatives can help you complete this form. Please contact us for an appointment.
Title of Invention (non-confidential)
Title:
TEC Edmonton file number:
Principal Inventor (Contact Person)
Full Name:
Telephone:
-
First
Last
E-mail:
University Position:
Faculty Member
Department:
Citizenship:
Student
Post-doc
Technician
Faculty:
Research Associate
Non-UA
Department address:
Room number and building
Postal Code
Did this inventor have academic appointments or employment contracts with organizations other than the University of Alberta
during the course of this work? (e.g. NINT, ACB, etc.) No
Yes  If yes, where?
Co-Inventor (2)
Full Name:
Telephone:
-
First
Last
E-mail:
University Position:
Faculty Member
Department:
Citizenship:
Student
Post-doc
Technician
Faculty:
Research Associate
Non-UA
Department address:
Room number and building
Postal Code
Did this inventor have academic appointments or employment contracts with organizations other than the University of Alberta
during the course of this work? (e.g. NINT, ACB, etc.) No
Yes  If yes, where?
Co-Inventor (3)
Full Name:
Telephone:
-
First
Last
E-mail:
University Position:
Faculty Member
Department:
Citizenship:
Student
Post-doc
Technician
Faculty:
Research Associate
Non-UA
Department address:
Room number and building
Postal Code
Did this inventor have academic appointments or employment contracts with organizations other than the University of Alberta
during the course of this work? (e.g. NINT, ACB, etc.) No
Yes  If yes, where?
UNIVERSITY OF ALBERTA
TEC EDMONTON
PAGE 2 of 7
Co-Inventor (4)
Full Name:
Telephone:
-
First
Last
E-mail:
University Position:
Faculty Member
Department:
Citizenship:
Student
Post-doc
Technician
Faculty:
Research Associate
Non-UA
Department address:
Room number and building
Postal Code
Did this inventor have academic appointments or employment contracts with organizations other than the University of Alberta
during the course of this work? (e.g. NINT, ACB, etc.) No
Yes  If yes, where?
Co-Inventor (5)
Please attach a separate sheet if there are more co-inventors involved.
Full Name:
First
Telephone:
-
Last
E-mail:
University Position:
Faculty Member
Department:
Citizenship:
Student
Post-doc
Technician
Faculty:
Research Associate
Non-UA
Department address:
Room number and building
Postal Code
Did this inventor have academic appointments or employment contracts with organizations other than the University of Alberta
during the course of this work? (e.g. NINT, ACB, etc.) No
Yes  If yes, where?
This section is for TEC Edmonton use only.
TTG representative handling file:
49
Name
Select (circle)
1
2
3
4
5
6
7
8
9
Sector:
Life sciences
Physical sciences
Hardware/software
Instructional technology
Phone
Industry Sectors
Agriculture/Food/forestry
Biotechnology
Chemical/Material/Process
Electronics/Electrical
Info/Communication/Instructional
Mechanical/Instrumental
Medical Device/Diagnostic
Pharmaceutical
Other
UNIVERSITY OF ALBERTA
TEC EDMONTON
PAGE 3 of 7
1. Description
Please describe the invention. Is the invention a new process; new plant cultivar or germplasm; microorganisms; composition
of matter; a new device or product(s); a new use for or an improvement to an existing product or process; copyrightable
software; an industrial design; or unique microelectronic topography? Please attach a document (manuscript etc.), if available,
or use the space provided. Attach sketches, photographs and other materials, if available, to illustrate the description.
2. Commercial Feasibility
Please identify and expand on the novel and advantageous features of the technology. How does it differ from existing
technology? What problems does it solve?
List the potential products you envision resulting from this invention, and whether you think these products could be
developed in the near term (less than 2 years) or the long term (more than 2 years).
Has any commercial interest been shown at this stage?
No
Yes  Name companies and specific persons if possible:


Please provide the following information if you know it:
Describe alternate technologies that accomplish the same purpose as this invention.
List companies and products currently on the market that make use of these alternate technologies, or could use your
technology.
3. Patentability
Are written and dated laboratory records and data available?
No
Yes  Give reference and physical location, but do not enclose:
 
Has the apparatus, product or process been made or tested?
No
Yes  Please provide details if useful:
 
Have you publicly disclosed the invention in any of the following ways? Please attach copies of all public disclosures.
Type:
Any publication?
Publication date: Reference:
Paper
No
Yes
Anticipated
Abstract
No
Yes
Anticipated
Thesis
No
Yes
Anticipated
Oral Presentation
No
Yes
Anticipated
Website
No
Yes
Anticipated
Discussion
No
Yes
Anticipated
outside of UA
Other/Additional
No
Yes
Anticipated
Prior Art
Do you know of any related patents or publications?
No
Yes  Patents/publications found (if any):
 
List any key competing research groups currently engaged in research and development in this area.
Third Party Rights
How was the work that led to the invention funded?
Funding agencies/companies:
UNIVERSITY OF ALBERTA
Year(s) of funding:
TEC EDMONTON
PAGE 4 of 7
Were any Networks of Centres of Excellence funds involved in the research?
No
Yes  Which Networks?
 
Are there any agreements with third parties related to this invention?
Type:
Any agreement?
Name of other party:
Corporate sponsored research
No
Yes
Material transfer agreement
No
Yes
Confidentiality agreement
No
Yes
Software license
No
Yes
Other
No
Yes
Attached?
No
Yes
No
Yes
No
Yes
No
Yes
No
Yes
4. Development Stage
Is additional research needed or underway to complete development and testing of the invention?
No
Yes  Please describe:



Are funds available to do this?
No
Yes  Please outline funding:

What disadvantages or limitations need to be addressed by future research?
5. Additional Information (Optional)
Please use the space below, and/or additional sheets, to provide information to facilitate the protection and commercialization
of this technology.
UNIVERSITY OF ALBERTA
TEC EDMONTON
PAGE 5 of 7
6. Freedom of Information and Protection of Privacy Act
The Inventor(s) acknowledge that all records prepared by the University in dealing with the within matter are in the custody and
control of the University. The University is or will be subject to the access and privacy provisions of the Freedom of
Information and Protection of Privacy Act (Alberta) which creates a right of access to records under the custody and control of
public bodies subject to specific, limited exceptions.
The records produced based on this Document contains information that would reveal trade secrets of the Inventor(s)
or commercial, financial, scientific or technical information of the Inventor(s) that is supplied in confidence, the disclosure of
which could reasonably be expected to either:
a) harm significantly the competitive position or interfere significantly with the negotiating position of the
Inventor(s) or their agent(s); or
b) result in similar information no longer being supplied to the University when it is in the public interest that similar
information continue to be supplied; or
c) result in undue financial loss to the Inventor(s).
Accordingly, except as required by law or as otherwise permitted pursuant to the terms of this Document, neither the University
nor the Inventor(s) will disclose the contents of this Document or the foregoing records other than,
a) for the purpose of implementation or enforcement of the same; or
b) a general statement on the parties to the Document and the Title of the Technology, either party being entitled to
publish that information.
UNIVERSITY OF ALBERTA
TEC EDMONTON
PAGE 6 of 7
7.
Commercialization Options for Inventors
The University of Alberta Patent Policy obligates all faculty and students to report all inventions (Article 4) if commercialization
is intended and provides the inventor with the choice (Articles 6 and 7) of commercializing their invention through TEC
Edmonton or independently. For additional information on the Patent Policy please contact TEC Edmonton.
Please indicate whether you wish to proceed with commercialization through TEC Edmonton or independent of the University
by checking AND signing either OPTION A or OPTION B, respectively.
A  Via TEC Edmonton. Assignment of Invention to the University of Alberta
For valuable consideration we report and assign all of our interest in and to the invention herein described together with any future
improvements to The University of Alberta. By placing the signature, each inventor acknowledges that she/he has read the Inventorship
Summary attached to this form and that to the best of her/his knowledge the inventor(s) listed in this form is (are) the only inventor(s) of
the invention reported.
Inventor’s signature(s) (If selecting option A, all inventors MUST sign here ONLY.)
1.
(
Print Name
Signature
Print Name
Signature
Print Name
Signature
Print Name
Signature
Print Name
Signature
2.
(Revenue Apportionment)
(
3.
%)
Date:
(Revenue Apportionment)
(
5.
Date:
%)
(Revenue Apportionment)
(
4.
Date:
%)
%)
Date:
(Revenue Apportionment)
(
%)
Date:
(Revenue Apportionment)
B  Independent of the University of Alberta.
We hereby report the above described to the University of Alberta. By placing the signature, each inventor acknowledges that she/he has
read the Inventorship Summary on page 2 of Submission Instructions attached to this form and that to the best of her/his knowledge the
inventor(s) listed in this form is (are) the only inventor(s) of the invention reported.
Inventor’s signature(s) (If selecting option B, all inventors MUST sign here ONLY.)
1.
(
Print Name
Signature
2.
(
Print Name
Signature
Print Name
Signature
Print Name
Signature
Print Name
Signature
3.
%)
Date:
%)
Date:
(Revenue Apportionment)
(
UNIVERSITY OF ALBERTA
Date:
%)
(Revenue Apportionment)
(
5.
Date:
(Revenue Apportionment)
(
4.
%)
(Revenue Apportionment)
%)
Date:
(Revenue Apportionment)
TEC EDMONTON
PAGE 7 of 7
8. Signatures of University Officials
Upon the selection of either choice A or choice B, through the signature(s) below, the Department Chair(s), and the Associate Dean (Research),
acknowledges an awareness of, and understand, this report of invention.
Department (1) Chair:
Date:
Print Name
Signature
Department (2) Chair:
Date:
Print Name
Signature
Associate Dean (Research):
Date:
Print Name
Signature
Institutional Representative for the University of Alberta:
Date:
Print Name
UNIVERSITY OF ALBERTA
Signature
TEC EDMONTON