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Sample Clauses for Mandatory Elements of NSERC’s IP Policy

This is not a legal document. It outlines mandatory elements of NSERC’s Intellectual Property (IP) policy and serves to provide illustrative examples of clauses that conform to NSERC’s IP policy.

The Natural Sciences and Engineering Research Council’s (NSERC) policy on (IP) supports the premise that every effort should be made to exploit the results of NSERC-funded research in Canada for the benefit of Canadians. In order to ensure that the rights of all participants are protected, it is mandatory that all IP agreements arising from, and related to, an NSERC award contain clauses that address the following mandatory elements:

  1. Timeliness of exploitation: Agreements where access to IP is granted via an exclusive license or assignment, before the start of the project, must state that exploitation will be pursued with due diligence and within an appropriate time frame. These exploitation terms are dependent on the technology and the nature of the relationship between the parties, but must be included and allow for future use of the IP by the inventors in the case of a failure to exploit the IP.
  2. Confidential Information: The IP assets of all participants must be respected. A partner’s proprietary data, commercially sensitive information and potentially valuable results or ideas must be protected from unauthorized, inadvertent or untimely disclosure.
  3. Research results cannot be secret: The results of the research must be publishable in the open literature. NSERC does not support secret or classified research. In order to secure IP protection, a maximum delay of six months is permitted when submitting papers for publication. No publication should expose a partner’s proprietary information without their express permission to do so.
  4. Academic progression: There can be no delay for the defence of a student’s thesis.
  5. Rights for future research and teaching: The university/college and its researchers must retain the right to use the knowledge or IP generated for non-commercial purposes in future research and in teaching.

In the remainder of this document, sample clauses are presented that demonstrate acceptable approaches to dealing with these five mandatory elements.

1) Examples of Sample Clauses for Mandatory Element 1: Timeliness of exploitation

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Example 1.1

The Licensee shall use its best efforts to bring Licensed Products and Licensed Processes to market through a thorough, vigorous and diligent program for exploitation of the Patent Rights, to develop manufacturing capabilities, to continue active, diligent marketing efforts and to satisfy the needs of such market with the Licensed Products and Licensed Processes throughout the life of this Agreement. The Licensee acknowledges and agrees to the performance milestones defined in Appendix […].

The Licensee’s failure to perform in accordance with the performance milestones defined in Appendix […] shall be grounds for the Licensor to terminate this agreement.

Return of Licensed Patent Rights:

Upon termination of this agreement, all of the Licensed Patent Rights shall be returned to the Licensor. In the event of termination of the Agreement by the Licensee, the Licensee shall grant to the Licensor a non-exclusive, royalty-free License, with right to sublicense, to manufacture, use and sell improvements including all known-how to Licensed Patent Rights made by the Licensee during the period of this agreement prior to the termination or conversion, to the extent that such improvements are dominated by, or derived from, the Licensed Patent Rights.

Example 1.2 (complies with Mandatory elements 1 and 5)

Subject to the terms and conditions of this Agreement and payment by the Company to the University of the full amount due in accordance with this Agreement, all intellectual property in the deliverables specified in Article X and conceived and/or made during the term of this Agreement in the performance of the Project (the “Foreground Intellectual Property”) shall be owned by the Company, including assignment of any rights to inventions. The University shall have the following rights:

  1. A royalty-free, non-exclusive, perpetual license to use the Foreground Intellectual Property for research and educational purposes only, subject to confidentiality requirements;
  2. In the event the deliverables or project results contain patentable inventions, copyrighted software, or know-how which is commercially exploited, a reasonable royalty or other financial recognition shall be negotiated in keeping with industry norms.
  3. In the event the Company does not exploit certain deliverables or project results within a specified time of (to be agreed upon), the right to commercially exploit them shall be reassigned to the University, subject to a royalty-free, non-exclusive license to the Company.


2) Examples of Sample Clauses for Mandatory Element 2: Confidential Information

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Example 2.1

Each party shall respect the background intellectual property of the other party used in the research project and any foreground intellectual property rights of the other arising under this Agreement. Without limiting any other provisions of this Agreement, each party shall use reasonable efforts to protect the other party’s proprietary data, commercially sensitive information, and potentially valuable research results or ideas from unauthorized, inadvertent or untimely disclosure.

Example 2.2

  1. The parties may disclose Confidential Information one to another to facilitate work under this Agreement. “Confidential Information” shall mean the confidential business or technical information of a party hereto that is identified as such in writing at the time of its disclosure or identified orally at the time of its disclosure, minuted and confirmed in writing within two weeks of the oral identification. Such information shall be safeguarded and only disclosed to persons with a need to know within the project collaboration. All parties shall use their best efforts to protect such information from disclosure to third parties not bound by relevant nondisclosure agreements.
  2. The obligation to keep confidential shall, however, not apply to information which:
    1. is already known to a third party to whom it is disclosed;
    2. becomes part of the public domain without breach of this Agreement;
    3. is obtained from third parties which have no confidentiality obligations to the contracting parties; or,
    4. is authorized for release by the disclosing party.
  3. Each party shall take all proper measures, and at least the same measures as it takes in respect of its own Confidential Information, to keep confidential the Confidential Information provided to it by another party. No party shall use another party’s Confidential Information for any purpose except that for which it was initially provided to the party. The University shall have all persons involved with the Project sign research participant agreements in the form attached as Schedule “X.”
  4. Each party hereto accepts and agrees that this term of confidentiality shall persist for a period of “XXX” months after the completion or termination of this Agreement. Upon completion or termination of this Agreement, each party that has received confidential information or material during the course of the Agreement shall, upon written request, return such confidential information and material to the other and shall not retain copies or transcripts thereof for any purpose whatsoever.

Example 2.3

The Company and the University may disclose confidential information one to the other to facilitate work under this Agreement. Such information shall be in written or other tangible form and shall be marked so as to identify it as confidential, or, if disclosed orally or visually, shall be stated to be confidential at the time of disclosure and summarized in writing and confirmed as confidential within thirty (30) days of disclosure. Confidential information shall be safeguarded and not disclosed to third parties by the receiving party. Confidential information shall not include information that:

  1. Is already known to the party to which it is disclosed;
  2. Is or becomes part of the public domain without breach of this Agreement;
  3. Is obtained from third parties that have no obligations to keep confidential to the parties to this Agreement.


3) Examples of Sample Clauses for Mandatory Element 3: Research results cannot be secret

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Example 3.1 (complies with mandatory element 3 and 4)

Within the period of this Agreement, unless otherwise agreed to in writing, the Company shall be advised in writing of the substance of any proposed disclosure related to this Agreement at least sixty (60) days in advance of presentation or publication. In the event that written objection is made, the parties shall endeavour to negotiate an acceptable version of the proposed disclosure, within the original sixty (60) day notice period. The maximum allowable delay for publication is six (6) months after the date on which the disclosure was submitted to the Company. If an acceptable version is not agreed upon, the University will be free to publish the original disclosure, subject to provisions of confidentiality, six (6) months after the date on which it was submitted to the Company. Disclosure includes articles, seminars and other oral and written presentations, but does not include theses or other communications submitted solely for the purpose of academic evaluation. In the event a graduate student of the University works on the Project and that student completes a thesis or academic report relating to the Project, the student will own the copyright in that thesis or report. There will be no delay for the defence of a thesis. The Company may make a written request to the University that a thesis be examined in camera and that any examiner sign a confidentiality and non-use agreement. The Company may request that such thesis or report may be withheld from deposit in the library for a period of up to six months to allow for the statutory protection of Intellectual Property.

Example 3.2

Sponsor recognizes that the results of the research project, including any foreground intellectual property and research data (the “Results”) must be publishable or otherwise available for public dissemination, and agrees that University and its researchers have the right to present at professional meetings or symposia, and to publish in journals, thesis, or dissertations, or otherwise of their own choosing, methods, information and data resulting from or gained in pursuing the research project, other than the Sponsor’s Confidential Information. To avoid improper disclosure of Sponsor’s Confidential Information or loss of available protection of such information or the Results through public disclosure, the University will furnish the Sponsor with copies of any proposed publication or presentation at least “XX” days in advance of such proposed publication or public presentation. The Sponsor shall have “XX” days after receipt of said copies to object to such proposed public dissemination; in which event, the University shall refrain from making such publication or presentation for a maximum of (not more than six [6] months) from the date of receipt of such objection to allow the Sponsor to file the appropriate protective applications or to take appropriate measures to protect the Sponsor’s intellectual property. The Sponsor shall have the right to request that any Sponsor Confidential Information be deleted from the materials submitted, or that portions thereof be rewritten so as to protect the proprietary rights of the Sponsor; provided that the University researchers shall have final authority to determine the scope and content of any publication, except with respect to the Sponsor’s Confidential Information.

Example 3.3

The University shall provide to the Sponsor a copy of any proposed publication or presentation that includes or discusses any information related to the Project or that may contain the Sponsor’s Proprietary Information containing both notice of the intended publication or presentation date and notice of the deadline for the Sponsor to object to such a publication or presentation at least ninety (90) days in advance of such publication or presentation. The Sponsor shall the have the opportunity to object within thirty (30) days in writing at its discretion to such proposed publication or presentation on the basis that the proposed publication or presentation includes that the Sponsor’s Proprietary Information or discloses patentable subject matter. If the Sponsor makes no such objection within the specified period, the University party shall be free to proceed with the publication or presentation. If the Sponsor makes such an objection, the University shall remove any Sponsor Property Information for the proposed publication or presentation as required by the Sponsor, and where the Sponsor intends to seek patent protection for an invention disclosed in the proposed publication or presentation, shall promptly provide the Sponsor with such reasonable assistance as the Sponsor requires in order to file for patent protection for the invention prior to the publication or presentation date (in which case the Parties agree that no publication or presentation shall be made until such application is filed, with such delay not to exceed six months from the date the Sponsor was provided with the proposed publication or presentation).



4) Example of Sample Clauses for Mandatory Element 4: Academic progression

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Example 4.1

Notwithstanding any other term or condition of this Agreement, no delay is permitted for the defence of a student researcher’s thesis based in whole or in part on the Results.

Where a graduate student is employed in the performance of work under the Project, the graduate student will own the copyright to the thesis report developed in conjunction with this Project. The graduate student will not be delayed in any way by the requirements of this Agreement in writing, presenting, and defending his or her thesis to meet the usual academic requirements for graduation.

Example 4.2

To eliminate the possibility that the evaluation of a thesis is delayed, a Sponsor may request to the University that a thesis be submitted and examined in confidence, and that any examiner not already covered by a suitable obligation of confidentiality, sign a confidentiality and non-use agreement. The Sponsor may also request that the thesis not be made public for a period not to exceed six (s6) months from the date of examination of the thesis.

Example 4.3 (complies with mandatory element 3 and 4). For institutions where public thesis defences are mandatory.

The University shall provide to the Sponsor a copy of any proposed publication or presentation that includes or discusses any information related to the Project or that may contain Sponsor Proprietary Information, including any thesis or dissertation, containing both notice of the intended publication or presentation date and notice of the deadline for the Sponsor to object to such a publication or presentation at most six (6) months in advance of such publication or presentation. The Sponsor shall the have the opportunity to object within thirty (30) days in writing at its discretion to such proposed publication or presentation on the basis that the proposed publication or presentation includes that the Sponsor’s Proprietary Information or discloses patentable subject matter. If the Sponsor makes no such objection within the specified period, the University party shall be free to proceed with the publication or presentation. If the Sponsor makes such an objection, the University shall remove any Sponsor Property Information for the proposed publication or presentation as required by the Sponsor, and where the Sponsor intends to seek patent protection for an invention disclosed in the proposed publication or presentation, shall promptly provide the Sponsor with such reasonable assistance as the Sponsor requires in order to file for patent protection for the invention prior to the publication or presentation date (in which case the Parties agree that no publication or presentation shall be made until such application is filed, with such delay not to exceed six [6] months from the date the Sponsor was provided with the proposed publication or presentation).



5) Examples of Sample Clauses for Mandatory Element 5: Rights for future research and teaching

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Example 5.1

Notwithstanding any other term or condition of this Agreement, the University retains or, where necessary, is hereby granted, the right on behalf of itself, its researchers, and all other academic research institutions, to use the Results for research, scholarly publication, and educational use.

Example 5.2

In the event that Company obtains a license to use or otherwise exploit Foreground Intellectual Property owned by the University, the University shall have a royalty-free, non-exclusive, perpetual license to use the Foreground Intellectual Property for research and educational purposes, subject to confidentiality requirements.