Express Ip Agreements For Mitacs Projects at UBC

Mitacs (www.mitacs.ca) is an important funding partner for researchers at both UBC Campuses and within the research community at our Affiliated Hospital sites. Through internship and fellowship programs for graduate students and post-doctoral fellows, Mitacs provides opportunities for researchers to partner with and solve the business challenges of Canadian companies.

 

NEW – UBC Mitacs Express IP Agreements 

New agreements to expedite and simplify intellectual property agreements for Mitacs projects.

Mitacs projects are funded at UBC through a direct UBC-Mitacs funding agreement which is administered by UBC’s Office of Research Services. There is therefore usually no need for any direct agreement between UBC and the company supporting the Mitacs project (the “Mitacs Partner”).

However, the University recognizes that Mitacs Partners often desire to have certainty around their rights and access to intellectual property (IP) developed during the Mitacs project.

After careful consultation with our industry partners and members of the research community, UBC has updated its practices to provide straightforward Express IP Agreements to provide IP-certainty for our industry partners. These agreements are:

The UBC Mitacs Express IP Assignment Agreement

Through this agreement UBC will pre-assign any intellectual property developed during a Mitacs Project to the Mitacs Partner if all of the following conditions are met:

  • The UBC research team approves of this assignment and does not have any conflicts of interest relevant to the Mitacs Project or Mitacs Partner;
  • The Mitacs Project is not part of an existing sponsored research project at UBC; and,
  • The Mitacs Project:
    • is based on existing IP owned or controlled by the Mitacs Partner; and/or,
    • will not use any UBC facilities or resources (i.e. the Mitacs Project will take place entirely in Mitacs Partner facilities)

See sample assignment agreement >
 

The UBC Mitacs Express IP Option Agreement

In cases where the above conditions are not met, UBC will provide the Mitacs Partner with an option to obtain a license to intellectual property that is developed during the Mitacs Project. The UBC Mitacs Express IP Option Agreement provides the Mitacs Partner with:

  • A non-exclusive, fully paid up, license to make, use and sell (but not sublicense) products and services based on any IP (including data, results, and know-how) that is developed during the Mitacs Project.
  • A time-limited option to obtain an exclusive, royalty-bearing, license for IP generated during the Mitacs Project.

These Express IP Agreements will be automatically generated upon the company completing the questionnaire below. Once signed by the Mitacs partner they should be sent to the UILO for signature and return.>

See sample option agreement > 

Generate an express IP agreement now

CONFLICT OF INTEREST

A conflict of interest arises when the members of the research team at UBC, or their direct relatives, have a pre-existing relationship with the Mitacs Partner company. This may include their owning shares in the company, being employed by the company, or having other financial interests in the company through consulting agreements or other forms of agreement. Any such relationship must be disclosed to the University in both the Research Project Information Form submitted to the UBC Office of Research Services and as part of a UBC faculty member’s conflict of interest declaration. Any conflicts of interest will inform the UILO’s review of any intellectual property agreement associated with a Mitacs Project.


CONFIDENTIALITY/NON-DISCLOSURE AGREEMENTS WITH MITACS PARTNERS.

It is expected that a Mitacs Partner will not provide any confidential information to UBC interns, or their supervisors, who are involved in a Mitacs Project. In the event that a Mitacs Project requires the exchange of confidential information, the University’s standard Non-Disclosure Agreement must be used. Access to this template is restricted to those with a valid UBC campus wide login.

Any deviations from the University’s standard Non-Disclosure Agreement template may lead to delays in completion.  Such deviations will only be accepted if they are material, reasonable, and appropriate for the project, these must be discussed with and appropriately signed by the UILO.


PUBLICATION

The University must be free to publish the results of all research,  including results from Mitacs Projects, per the requirements of UBC Policy LR2 (Research).  No restriction or delay on a student’s thesis defense or publication is permitted.


LEVERAGING EXISTING FUNDING WITH MITACS

In certain situation existing funding that has been received by UBC from a research partner may be eligible for matching by Mitacs funding programs.  Mitacs’ terms and conditions require that the Mitacs Partner’s contribution to the Mitacs award are sent to Mitacs before being disbursed to the Investigator via UBC.  Therefore, the UBC Investigator should be aware that the transfer of funds from UBC to Mitacs will be treated as an expense, and the appropriate indirect-costs rate will be deducted from the funds in the course of the transfer. Mitacs may charge additional taxes and fees on top of the matched funds.


Generate an Express IP Agreement

Please answer the following questions to obtain a link to generate the appropriate intellectual property agreement for your Mitacs project. If you have any questions, please contact jp.heale@uilo.ubc.ca.