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 our team if you require further information on a specific situation.
Determining the inventors / originators of computer software
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.
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 themselves on relative individual contributions. It is very important, however, that only those who have made a substantial contribution to inventive process (i.e. stages 1-3 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 # LR11 - Inventions, although the intellectual property in computer software is generally protected by other means than by patent in Canada.
Who owns Inventions developed at UBC?
UBC Policy LR11 (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 the Innovation UBC team.
