Canadian university takes own researchers to court in IP battle

Case may show that Canada needs a broader strategy to become an innovation powerhouse

November 7, 2018
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In Canada’s most high-profile intellectual property fight, the University of Waterloo is trying to prove that it holds the rights to a potentially valuable new battery technology.

It instead may be proving an even bigger point: that Canada – for all its emergent research strengths – does not yet have the pieces in place to support its ambitious claim to be home to “Silicon Valley North”.

The pending lawsuit asks the Ontario Superior Court to decide whether a few Waterloo scientists or the university and its outside funders hold the legal ownership of a new type of rechargeable zinc-ion battery that outperforms standard lithium-ion batteries.

But, for many, the broader and more consequential question is whether Canadian politicians have simply put too much pressure on their research universities to move too far, too fast.

In that light, the Waterloo case appears to be more a tale of novice mistakes than one of intentional deceit on either side, said Wissam Aoun, an associate professor of law at the University of Detroit Mercy who teaches students on both sides of the US-Canada border.

The confusion, Dr Aoun said, can be tied to an aggressive investment-based push by the Canadian government in recent years to make the country a research-driven innovation powerhouse.

The government plan includes lots of money – federal officials in March promised another new batch of research investments totalling nearly C$4 billion (£2.4 billion) over five years. But the underlying entrepreneurial culture, and knowledge of how to handle that money, will simply require more time to develop, said Dr Aoun, who also works at Ontario’s University of Windsor.

“Canada has tried to do this all over the course of five years or six years,” he said, “and that’s where you’re getting the ball fumbling.”

The many messy details of the Waterloo case appear to bear that out. The battery concept was developed in 2015 by Brian Adams, a doctoral student, and Dipan Kundu, a postdoctoral fellow, working in the lab of Linda Nazar, a Waterloo professor of chemistry. The Nazar lab’s financing included C$1.1 million from the US Department of Energy, beginning in 2013. University policy lets researchers keep the rights to their inventions, except if they are funded by outside groups.

Professor Nazar first told her university that the work was covered by the US grant money, but she then reversed this view. Both the university and a company that Dr Adams formed with a partner – Salient Energy, housed at a University of Waterloo start-up incubator – went forward with competing patent claims on the technology.

Among additional complications, Salient partners won a C$35,000 entrepreneurship competition, and the terms of the prize acceptance within the incubator required the surrender of intellectual property rights; Professor Nazar made a disputed assertion that she was a meaningful contributor to the invention, which would give the university another claim to ownership; and the university never had Dr Adams sign the standard “informed consent” paperwork necessary for the institution to take legal ownership.

All those complications and possibly overlapping and contradictory policies suggest a system that is trying to run faster than it is capable of at the moment, Dr Aoun said.

“I don’t think anybody was trying to do anything inappropriate here,” he said of the parties involved in the Waterloo battery dispute. “I just think this is a case of a university that is moving very quickly.

For its part, the university insists that its processes for handling inventions are sufficiently clear, and that the Salient Energy case was just a particularly tough example. “The current dispute with the student company is both unique and complex,” a spokesman said, “and is not representative of the results of the university’s IP policy as a whole.”

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