University of Waterloo, former student in legal battle over invention

The University of Waterloo is in a legal battle with one of its former students over technology that was developed in one of its labs.

Brian Adams was a graduate student working with the Nazar Research Group, a lab at the university that specializes in developing new material for energy storage.

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While working in the lab, Adams helped discover a new material that could be used to create a rechargeable zinc ion battery. 

According to the university, it has a "creator-owns policy" that says in the case of sponsored research there may be a governing contract about the intellectual policy but "those decisions are made on a case-by-case basis." 

Ownership disputed

In its Statement of Claim, the university says the lab where Adams worked was funded by American company Argonne National Laboratory. 

Because Argonne funded the lab, the university says Adams's graduate work was under contract to Argonne. The university owns it and Argonne has the right to license it. 

The way they treated us through this ... it doesn't make us feel good about the school.- Ryan Brown, Salient Energy

But Adams disputes this, saying in his Statement of Defense that the lab received funding from a number of external funders and it is impossible to trace whose money paid for his research.

Adams also points out that the university's intellectual property policy "requires that students who become involved in contractual research must be informed of, and agree by signature to, the terms of the contract."

He says that in the five years he worked in the university's lab, he was not made aware of the university's contract with Argonne and did not sign an agreement giving away his intellectual property rights.

University launches legal action

Since leaving the university, Adams and fellow student Ryan Brown have launched a start-up company, Salient Energy, described as a "business of developing battery technology." 

In 2016, the company moved into Velocity Garage, the University of Waterloo's start-up incubator, and was awarded a $35,000 grant. 

Despite the external show of support, the university has continued to press the issue of ownership with Adams. 

In June 2018, it launched legal proceedings against Salient, asking the court to recognize the university as the sole owner of the discovery and related patents. 

It also wants Salient to pay at least $600,000 in damages.

Impact of legal action

The university insists that it turned to the courts as a "last resort," in order to meet its contractual obligations with Argonne. 

"We are completely committed to resolving this case without needing to follow the course of legal action," said Nick Manning, associate vice president of communications with the university. 

"We would, of course, prefer to ensure that we have a mutually agreeable solution to this admittedly messy problem."

Salient says it is also open to a settlement, but Brown said he and his colleague are confident in their case should it go to court. 

He also said that while university's legal action hasn't had a significant impact on the company's growth, it has affected him and his colleague personally.

"We're pretty hurt by how UW's treated us in this process," Brown told CBC Kitchener-Waterloo. "I spent a long time at UW, as did my co-founder. 

"We thought that the school was really supportive of start-ups. We knew that they were really proud of their [intellectual property] policy. And, so, the way they treated us through this ... it doesn't make us feel good about the school."