These guidelines are intended to assist researchers understand who is entitled to be named as an inventor or originator.
As they provide a general overview rather than comprehensive advice, you should contact the UBC University-Industry Liaison Office (UILO) for further information on specific situations. If your project concerns computer software, you should also refer to the Computer Software Inventorship Guidelines.
An invention is "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter." An invention or discovery includes data bases, audio-visual and computer material or equivalent circuitry, biotechnology and genetic engineering products and all other products of research that may be licensable: University Policy #88 - Inventions and Discoveries.
The act of inventing involves two stages: (i) conception and (ii) reduction to practice. An invention begins with an idea -- "conception" of the thing or subject matter that is ultimately created and the complete means of creating it. Then the idea is reduced into practice by testing and ultimately making or translating the idea into a physical and useful form. The conception (idea) stage is complete when there is definite and permanent idea of an operative invention that could be described to a person of ordinary skill in the art who could then construct or use the invention without extensive further research or experimentation.
For the purpose of determining who is an inventor, only a person's role in the conception (idea) stage is considered. Each person who makes an original and substantive contribution to conceiving the thing ultimately invented or one of its essential elements is legally entitled to be named as an inventor. An inventor is one who formulates and describes the means of making the thing ultimately invented.
A person will not be considered an inventor, if he or she merely:
- Suggested or thought about an idea or end result or posed the question to be solved, but did not also come up with the actual way of implementing the idea, achieving the end result or solving the problem;
- Contributed an obvious, rather than an original and substantive, element of the invention;
- Was involved in testing or reducing someone else's idea into practice;
- Suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual invention;
- Followed instructions of those who conceived the end result or solution;
- Is the department head, supervisor or head of the laboratory where the invention was developed, but did not contribute directly and substantially to the inventive process; or
- Provided funding for the research, equipment or laboratory where the invention was created.
Inventorship is also different than authorship. A person may be an author or co-author of a publication describing an invention, but will not be considered a co-inventor unless he or she made an independent conceptual contribution to the invention.
An invention may have more than one inventor. To qualify as a joint or co-inventor, you must have made an independent, conceptual contribution to an invention or one of its essential elements. The contribution must be substantial and one that makes a difference in the essence, use, application or production of the invention.
Joint or co-inventorship requires some form of communication between the inventors. It is not necessary, however, that they physically work together or for the ideas to have occurred to the co-inventors at the same time. Rather the invention is the result of collaboration, each co-inventor contributing in an original substantive way to conceiving that which is ultimately invented.
The role a person plays in the conceptual process is determinative of inventorship, rather than one's status at the University. Consequently, any member of a research group - whether graduate student, post-doctorate fellow, technician or full professor - who makes an original, substantive contribution to the conception of the invention or one of its essential elements is entitled to credit as an inventor or co-inventor. Team members who merely assist in finalizing the invention, for instance by gathering essential data or building the end product, are not entitled to credit as inventors unless they also made an original, substantive conceptual contribution.
Exclusive rights to use, make, construct and sell an invention within a country are not automatic but are protected by patent (as well as by other means). Within a patent application, all co-inventors must be identified without distinguishing whether one person contributed more than another. The contributions of the co-inventors, however, may not have not been equal. It is up to the co-inventors to enter into an agreement amongst themselves regarding each inventor's relative contribution and future share of commercialization proceeds. UBC will assist in resolving disputes and will remit revenue earned from commercialization based on each person's agreed upon share.
Software is often created by a team or an organized research group in several stages over a long period of time and then maintained and modified in subsequent versions.
Determining who are the "inventors" or "originators" of software can therefore be a complex question. Yet it is important to correctly name the inventors / originators and agree on their relative contributions to the inventive process, if the software is to be commercialized and the intellectual property rights protected.*
These Guidelines are intended to provide a general overview, rather than comprehensive advice, on who are the inventors / originators of computer software developed in a University setting. You should contact us if you require further information on a specific situation.
Software creation is sometimes described as a waterfall process, typically moving through the following stages:
- conceiving the concept,
- defining the general requirements,
- designing and describing the system / algorithm (structure, sequence and organization),
- building or constructing the system,
- developing the testing scenarios,
- testing, and
- implementing and modifying the system.
Some or all of these stages may be repeated when subsequent versions of the software are developed.
In determining who are the inventors / originators of software, one must examine which individuals made an original, substantive contribution to its creation or design. Those with key roles in the stages 1 - 3 certainly meet this test. The inventive contribution of those involved in stages (iv) - (vii) is less certain; consequently those involved solely in these latter stages are generally not entitled to credit as inventors/originators.
Persons providing the test cases and overall organization for the software may also qualify, if their contributions added in an original and substantive way to the ultimate design. Likewise, an individual involved in developing subsequent versions of the software may be entitled to rights as an inventor / originator, if he or she made an original, substantive contribution to the new version's design.
A person will not be considered an inventor / originator of the software, if he or she merely:
- Contributed an obvious, rather than an original and substantive, element of the software;
- Was involved in testing the software or translating it into standard computer language;
- Suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual software;
- Followed instructions of those who conceived the software design, e.g. constructed or modified the software using the algorithm, organizational structure and test scenarios provided by others;
- Wrote the technical documentation for the software;
- Is the department head, supervisor or head of the laboratory where the software was developed, but did not make a direct, original, substantive contribution to its creation or design; or
- Provided funding for the research, equipment or laboratory where the software was developed.
Not every inventor / originator of the software may have contributed equally. Certain members of a software development team may have been working on the project for years, while others may have been involved for only a short period. A graduate student who works on the project for only one term but nevertheless makes a small original contribution to ultimate design of a version of the software, is entitled to credit as a partial inventor / originator for that period. Other individuals may have played key roles in designing different versions of the system but moved their focus to other projects. One faculty member may have developed the initial concept and organizational structure, and continues to oversee is design. All are entitled to partial credit as inventors / originators, although some may be entitled to receive more credit and compensation than others. It is a person's role in the inventive design process, not his or her status within the University, research team or facility, that entitles that person to receive credit as an inventor / originator and share of future commercialization proceeds.
It is up to the research team to agree amongst itself on relative individual contributions. It is very important, however, that only those who have made a substantial contribution to inventive process (i.e. stages (i) - (iii) above) are included as inventors / originators. Incorrectly crediting persons as inventors / originators or failing to correctly include someone as an inventor / originator can have serious ramifications in protecting and licensing the software. The inventors / originators should thus discuss how relative contributions shall be valued as early as possible in the software development process. It may be helpful to develop a formula for valuing individual contributions based solely on each person's substantive creative contribution to each version of the software.
The University will assist to resolve disputes that may arise. To avoid misunderstandings, graduate and other students should discuss these issues with the supervising professor and research team to understand their role before beginning work on a project.
* The term "inventor / originator" is used throughout these Guidelines, since computer material is considered an invention under University Policy # 88 - Inventions and Discoveries, although the intellectual property in computer software is generally protected by other means than by patent in Canada.
UBC Policy 88 (Inventions and Discoveries), determines the ownership and rights associated with Inventions created at UBC. Under this Policy the ownership of Inventions varies depending on who created the Invention and the circumstances under which the Invention was formed. Generally speaking, the University owns all Inventions developed using University resources as a result of the research effort of faculty members, staff, and graduate students. Further information can be found in the Ownership of Inventions at UBC page or by contacting a member of the UILO’s Technology Transfer Group.