Agriculture and Agri-Food Canada Intellectual Property Procedures (4 of 16)

Certificate of Determination

AAFC will issue a Certificate of Determination confirming the Crown's ownership of the disclosed IP following the completion of invention disclosure evaluation process. The Director of the OIPC, as delegated by the minister, will issue Form 2 - Certificate of Determination (Annex D), in accordance with the Public Servants Inventions Act (PSIA).

Upon completion of the Certificate of Determination an officer of OIPC will file the determination. A copy of the determination will be provided to the inventor(s) who must confirm receipt.

If the invention involves inventors who are not employees of Canada, then Form 2 - Certificate of Determination will be used to claim AAFC ownership of those elements contributed by AAFC employees.

The Marketing and Licensing Manager, OIPC will arrange to have a Certificate of Determination to retain the Crown's IP rights (Form 2) prepared and signed off by the Director, OIPC. If it is unclear from Form 1, whether the IP rights are vested in the Crown, then Form 2 will be prepared after the invention disclosure has been evaluated.

Certificate of Transfer (Assignment)

AAFC may issue a Certificate of Transfer (Assignment) to assign or transfer the Crown's IP ownership rights to non-Crown owners.

Form 3 - Certificate of Transfer (Assignment) (Annex E) may be executed by the Director of the OIPC, as delegated by the Minister, in accordance with the PSIA.

A copy of the above-noted certificate will be provided to the inventor(s) who must confirm receipt.

Background Intellectual Property

Background IP includes IP deemed to be relevant to the project and already owned by the Parties before the project begins.

As such, the AAFC Background IP is a Crown asset, which must be managed in accordance with applicable laws, regulations and government policies.

Any other use of the AAFC Background IP or access to the AAFC Background IP by parties other than AAFC must be negotiated in accordance with the applicable laws, regulations and government policies.

The OIPC will be responsible for assisting and facilitating discussions related to the usage of, or access to, the AAFC Background IP.

Foreground Intellectual Property

Foreground IP includes IP arising within a project whether generated by employees of one organization or of more.

As such, AAFC Foreground IP is a Crown asset, which must be managed in accordance with applicable laws, regulations and government policies. AAFC may both use and transfer the foreground IP to other parties for further development and/or commercialization.

The OIPC will be responsible for the management of the AAFC Foreground IP.

Joint Ownership of Intellectual Property

Jointly owned IP arises usually from collaborative projects involving multiple institutional parties. Multi-party projects (ie projects involving scientists not employed by the Government of Canada) should be subjected to risk assessment, as outlined in AAFC's Risk Management Framework (Annex F). Project risks must be identified and assessed for both financial and business related issues, including IP infringement, exposure to liability and ethical considerations. Based upon the analysis, the appropriate risk management strategy should be generated, and implemented through the appropriate prescribed legal agreement.

The AAFC IP Policy requires that any IP resulting from collaborative research involving AAFC will, to the extent possible, remain the property of AAFC. The Department seeks to avoid joint ownership of IP as per the attached Memorandum on AAFC Policy on Joint Ownership of IP (Annex G).

Non-Government of Canada engaged in collaborative research with AAFC employees, must be subject to a binding legal agreement, preferably one that requires assignment of any IP resulting from their work at AAFC.

AAFC may assign its ownership of inventions to another institution whose employee is the (a) co-inventor. However, any such assignment must ensure that Canada receives a license to practise any IP arising from an invention involving such an assignment. Alternatively, the non-Crown employed inventor and/or their employer may assign the ownership to AAFC.

Third Party Background Intellectual Property

Often in an emerging field of science, much of the new knowledge is proprietary. AAFC may require access or be requested to provide access to existing background IP owned by a third party. A detailed research and development and technology transfer plan is essential in order to understand the worth and benefit of accessing third party IP. It is also important to understand what encumbrances may be associated with access.

Any third party proprietary IP to be used for any research project, whether for AAFC internal research programs or under CRDA or contracting-out research, must be identified and disclosed by AAFC scientists at the research planning stage. The AAFC IP Policy requires that a legal agreement (e.g., a Material Transfer Agreement (see Annex H) for research purposes, or a license to exploit Background IP) to access proprietary third party IP must be in place before any use of the Background IP by AAFC. Such an agreement must address all implications of research and development flexibility, and rights to own, control, exploit and transfer any/all resulting Foreground IP.