OTL and the Inventor: Roles in Technology Transfer
- Patent Policy
- Waiver Policy
- Copyright Policy
- Online Education
- Tangible Research Property (TRP) Policy
- Ownership
- Royalty Sharing
- Third Party Licensing
- Sponsored Research
- Signature Authority
- U.S. Government-Funded Inventions
- Outgoing Material Transfer Agreements (MTAs)
- Links to University Policies on Conflict of Interest
- Equity Acquisition in Technology Licensing Agreements
- The Stanford Industry Interactions Policy
- Export Control Reminder Memo from the Dean of Research
- Best Practices for Student Entrepreneurial Courses
- Best practices for Student Start-Ups
- Best practices for Faculty Start-Ups
Patent Policy
The University's patent
policy requires that all potentially patentable inventions conceived
or reduced to practice in whole or in part by members of the faculty or
staff (including student employees) of the University in the course of
their University responsibilities or with more than incidental use of University
resources be disclosed on a timely basis to the University. Title to such
inventions is assigned to the University, regardless of the source of
funding, if any. Inventors may place their inventions in the public domain
if they believe that would be in the best interest of technology transfer
and if doing so is not in violation of the terms of any agreements that
supported or related to the work.
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Waiver Policy
Inventors and creators are required to make a good faith determination of whether or not an invention or copyrighted work falls within the Stanford policy. Stanford is not in the position to make such a determination and relies on its inventors and creators to understand the policy. Therefore, Stanford will not confirm in writing whether or not an invention or copyrighted work falls outside the policy through a “waiver of rights” letter.
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Copyright Policy
The University's copyright policy establishes that all rights in copyright to pedagogical, scholarly, or artistic works, regardless of their form of expression, shall remain with the creator, except in specified cases where law or sponsored agreements require otherwise.
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Online Education
Policy clarifications concerning online instruction.
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Tangible Research Property (TRP) Policy
The University's TRP
policy promotes the prompt and open exchange of tangible items produced in the course of Stanford research projects with scientific colleagues outside the investigator's immediate laboratory. TRP includes such items as: biological materials, engineering drawings, computer software, integrated circuit chips, computer databases, prototype devices, circuit diagrams, equipment and associated research data.
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Ownership
Title to all potentially patentable inventions conceived or first reduced
to practice in whole or in part by members of the faculty or staff (including
student employees) of the University in the course of their University
responsibilities or with more than incidental use of University resources,
belongs to the University.
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Royalty Sharing
Pursuant to Stanford's present policy on royalty sharing, net cash royalties
are divided 1/3 to the Inventor, 1/3 to the Inventor's department and
1/3 to the Inventor's school. The Invention Disclosure Form requests that
the Inventor indicate the department that supported the development of
the invention. Unless OTL is notified otherwise, the indicated department
and its school will receive the department and school's share of royalty.
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Third Party Licensing
Occasionally, OTL will use a third party to license technology if the
third party has a special expertise or resource for the particular situation.
In such cases, the third party may be allocated a share of the royalty
income, if any. The Stanford share of royalties will be distributed pursuant
to the normal royalty-sharing policy.
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Sponsored Research
Industrial sponsors sometimes wish to sponsor research related to existing
University inventions and patents. Occasionally, faculty/inventors hope
to use intellectual property rights to encourage research funding or industrial
affiliate memberships. While OTL takes into consideration such linkages,
license agreements are separate and distinct from sponsored research or
membership arrangements. Sponsored research funds are not royalties and
are not shared with inventors. In all cases, we strive to receive a fair
return for the licensed intellectual property rights. Industrial contracts
are handled by the Industrial
Contracts Office.
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Signature Authority
OTL has signature authority on behalf of the University for license agreements,
material transfer agreements, industrial contracts and other agreements
that pertain to intellectual property. University faculty and other inventors
are not authorized to sign agreements that obligate the University to
assign or license intellectual property rights to another entity. The
management of University intellectual property is complex because there
are often many conflicting interests. We work at the interface of science,
business and law within the multiple contexts of University, industry
and government. We know that the key to our success is our ability to
work well with our diverse constituencies -- inventors, departments, schools,
industry, the U.S. Government and the University.
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U.S. Government-Funded Inventions
Stanford, as is other research universities, is governed by the Bayh-Dole
law (P.L. 96-517 and 98-620 as amended) which sets out the disposition
of inventions made with Federal assistance.
https://s-edison.info.nih.gov/iEdison/37CFR401.jsp
The law provides that nonprofit organizations and small businesses may elect to retain title to inventions conceived or first actually reduced to practice in the performance of work under a funding agreement. The University must disclose each subject invention in a timely manner and comply with other regulatory actions. In addition, we must grant the U.S. government a royalty free license for governmental purposes, give preference to U.S. manufacturers, give preference to small businesses and share royalties with inventors. We must periodically report our licensing activity to the Government.
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Outgoing Material Transfer Agreements (MTAs)
Stanford and OTL have endorsed a policy regarding the distribution of tangible research materials. This policy encourages faculty and others who are interested in distributing materials to their colleagues in academia and non-profit institutions, or those in the commercial sector who only use materials for research purposes, to provide the materials with no additional paperwork.
If there is still an interest in attaching paperwork with the materials, we have a brief letter agreement; that may be sent along with the materials.
If you will be sending materials to an industry colleague, and you are not sure whether they will restrict their use to research only, there are two paths that you could choose:
- Have your colleague fill out an MTA that restricts their use of the materials to research or evaluation purposes only. This document should be signed by an authorized official of the company and by OTL.
- Contact OTL about possible licensing/commercialization of the materials.
In addition, OTL has entered into an arrangement with ATCC whereby they may be able to distribute the materials for you. Please contact OTL for further information regarding this program.
If a recipient of materials requests any changes to the agreement, you are welcome to evaluate the request and accept or reject the change. If you have any questions about the agreement, or are unsure whether to accept the change, please feel free to consult with OTL about the legal terms.
Information about incoming MTAs is available from the Industrial Contracts Office.
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Links to University Policies on Conflict of Interest
- Overview of Conflicts of Interest (COI)
- Faculty Policy on Conflict of Commitment and Interest
- Faculty COI Review Form: If Conflict of Interest review related to licensing activity is required under this Stanford policy, the faculty member should notify his or her licensing associate and complete this form for submission to the appropriate deans.
- “Best Practices” for Faculty Start-Ups
- Tips for Avoiding Conflict of Commitment and Interest
- Conflict Of Commitment And Interest For Academic Staff
- Staff Policy on Conflict of Commitment and Interest
- Relationships Between Students (Including Postdoctoral Scholars) and Outside Entities
- Outside Consulting Activities by Members of the Academic Council
- Institutional Conflict of Interest in Research Involving Human Subjects
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Equity Acquisition in Technology Licensing Agreements
The University's policy on Equity Acquisition
establishes specific conditions under which Stanford may acquire equity as part of
a licensing agreement
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The Stanford Industry Interactions Policy
The Stanford Industry Interactions Policy, which became effective on October 1, 2006, governs interactions, largely in the clinical and educational arenas, with the pharmaceutical, biotech, medical device, and hospital and research equipment and supplies industries.
(Research interactions are governed by a separate policy.) The policy applies to the School of Medicine, the Stanford Hospital and Clinics, and the Lucile Packard Children's Hospital, as well as to other clinics operated by the hospitals. The umbrella policy was updated to include, among other changes, the CME Commercial Support Policy, which was introduced in 2008.
The Web site at http://med.stanford.edu/coi/siip/ contains the policy as well as further information and resources for applying it. We encourage you to become familiar with its contents, especially the sections that apply directly to your areas of responsibility.
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Best Practices for Student Entrepreneurial Courses
Entrepreneurship is deeply ingrained in Stanford's culture and we have benefited greatly from it.
This document (PDF) provides basic guidelines to faculty, students and the Office of Technology
Licensing (OTL) for inventions developed as a result of entrepreneurial courses taught at
Stanford.
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Best practices for Student Start-Ups
Both Stanford and its entrepreneurs have responsibilities to optimize technology transfer and mitigate conflict of interest (COI) when licensing Stanford intellectual property to a start-up is considered. Stanford has a rich history of translating inventions, and these practices are designed to build on that strong base.
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Best practices for Faculty Start-Ups
Stanford is committed to avoiding either perceived or actual conflict of interest issues with respect to faculty start-ups. Both Stanford and faculty have responsibilities to optimize technology transfer and mitigate COI when licensing Stanford IP to a faculty start-up is considered.