Invention Disclosures and Status:
Why should I disclose an invention to OTL?
Stanford faculty, staff or students should disclose an invention to OTL if they believe their research could be commercialized for public use and benefit. University inventions are typically in the very early stages of development and require a significant investment before bringing a product to market. Intellectual property protection often provides the necessary incentive for a company to pursue such a project.
The University's patent policy requires that potentially patentable inventions be disclosed on a timely basis to the University. This allows the University to fulfill its obligations both to the Federal Government under the Bayh-Dole law and to other companies or organizations that sponsor research at Stanford.
Alternatively, 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.
Do the Inventors benefit from licensing the invention?
Per Stanford’s policy, revenues from license fees, royalties and equity – minus OTL’s administrative fee and any unreimbursed expenses – are shared with the inventors (see Royalty Sharing).
How should I disclose an invention to OTL?
The on-line disclosure form can be found on the Researcher Portal - https://otldisclosure.stanford.edu
When should I disclose an invention to OTL?
You should complete an Invention and Technology Disclosure whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, or other communications. Once the invention is publicly disclosed (i.e. published or presented in some written form to non-Stanford listeners), potential patent rights are limited. Be sure to inform OTL of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/masters thesis, publication, or other public presentation of the invention. Please note that a thesis is considered a publication even if it is embargoed.
The U.S. now has a “first inventor to file” system. While this system does preserve a nominal one-year grace period for an inventor to file a patent application in the U.S. after making a public disclosure, OTL feels that it makes sense to proceed as if the U.S. had transitioned to a true “first to file” system. For this reason, OTL will not file a patent application on subject matter that has been published. More information about the “first inventor to file system” can be found in Frequently Asked Questions about the Leahy-Smith America Invents Act (AIA).
How can I find out the status of my invention?
You can check the Researcher Portal. While logged in, under the Inventions tab, you can learn the status of your inventions, including patents, licenses and marketing efforts. This site also allows inventors to update their contact information.
Additional information about what to expect as an inventor working with OTL can be found in the OTL Inventor’s Guide (PDF).
Inventorship and Ownership: How will we know who the inventors should be? Does inventorship "order" matter?
Authorship of a scientific publication and inventorship have different criteria and are not equivalent. Inventorship is a matter of law, depending on what is specifically claimed in the patent as written. A patent that fails to name the correct inventors may be ruled invalid under certain circumstances. The law does not recognize individuals as inventors who merely follow someone else's instructions or simply provide lab space, funding and/or equipment. Because patent claims may change while the patent application is undergoing review by the patent office, inventorship may change as well.
For the purpose of your invention disclosure form, name any individual who has made a creative contribution to the invention. When necessary, OTL will initiate a formal inventorship determination using outside patent counsel. The order inventors are listed bears no relationship to their contribution to the invention. Additional information about inventorship can be found at http://otl.stanford.edu/inventors/inventors_patent.html.
Who owns what I create?
Ownership depends upon the employment status of the creators of the invention and their use of University resources. Considerations include:
As a general rule, the University owns 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. The University’s copyright policy describes the applicable rules for copyrightable works. In some cases, the terms of a Sponsored Research Agreement or Materials Transfer Agreement may impact ownership. When in doubt, please call OTL for advice. Stanford’s full policy on ownership of inventions is stated in the Research Policy Handbook.
Does the government have rights in the invention?
If the invention was created in the process of research funded by the government, the government retains certain rights in the invention.
What if I invent with someone who is not from Stanford?
Absent any contractual obligation, we rely on patent law which allows joint inventors joint rights in an invention.
I have a great idea but I came up with it in the shower. Do I have to disclose it?
Under Stanford policy, the University owns 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. “University responsibilities” often include ideas conceived off-campus, if they are related to your work done at the University. When in doubt, please call OTL for advice.
What is intellectual property?
Intellectual property, also known as "intangible property", is different from “tangible property” such as land, a building, a computer, etc. Intellectual property may be protected under the patent, trademark, trade secret and/or copyright laws. More information about these types of intellectual property can be found at http://otl.stanford.edu/inventors/inventors_ip.html.
Patent Applications: How much does it cost to file and obtain a patent? Who pays the patent costs?
It typically costs $25,000 to $35,000 to file and prosecute a U.S. patent application. This includes patent attorney costs and the filing fees paid to the USPTO. If the technology is unlicensed, Stanford pays the patent costs. These expenses are reimbursed by the licensee if the technology is exclusively licensed.
The patent attorney sent me a draft patent application, what do I do?
OTL relies on the inventors to review patent applications to ensure that they capture the invention. You should review the application to make sure that it accurately and completely describes the invention and that all those who contributed to the conception of the invention are named as inventors. It is important to respond to the attorney in a timely manner so that the attorney can make the necessary revisions and file the application in the patent office prior to any deadlines (typically before a public disclosure of the invention). Additional information can be found in Instructions for Reviewing Your Patent Application (reprinted with permission of Fenwick & West LLP).
What happens if you don’t file a patent?
There are certain types of technologies, such as software and biological materials, that do not require patenting in order to be successfully licensed. For other inventions, if OTL decides not to pursue patent protection and/or chooses not to actively market the invention, the inventor can sometimes pursue development of the invention while the University maintains ownership. In such cases, the inventor typically pays all the patent costs. Your OTL licensing specialists can discuss alternatives based on the specific circumstances of a particular invention.
Licensing and Negotiations: What is a license?
A license is a contract whereby the owner of intellectual property grants permission for another party to act under all or some of the owner’s rights. OTL typically transfers Stanford intellectual property through a license agreement in which the University grants its rights in the defined technology to a third party for a period of years, sometimes for a particular field of use, and sometimes limited to certain regions of the world.
How long does it take to license an invention?
The process of protecting the technology and finding the right licensing partner may take months to years to complete, if ever. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, and the amount of work and money needed to bring a new concept to the marketplace. Because university technologies are often too early stage for industry to invest in, we are not able to find licensees for many technologies.
If OTL finds a licensee, negotiations can proceed quickly if the company can agree to the terms of OTL’s standard agreement (see Sample Agreements). From there, the time line for negotiation is usually determined by how many contract provisions the potential licensee wishes to negotiate. Financial terms rarely require long negotiating times. But, it is common for non-financial provisions such as field of use, term of the license, or indemnification to entail more discussion. If terms are agreed to quickly, OTL has signed an agreement within one day.
What if more than one company is interested in obtaining a license?
Typically, a university does not have multiple potential licensees bidding on an invention. If there are several parties interested in a license, OTL will endeavor to either grant non-exclusive licenses or to accommodate multiple parties by dividing the field of use for exclusive licenses. Occasionally, OTL must choose one company among several choices to enable effective development; the choice will be based on the ability of a committed company to bring the technology forward to society as quickly as possible. Sometimes an established business with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option.
What are typical license terms?
Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention which requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive for the licensee to commit risk capital investments required for product development. License terms for a start-up company can be different than those for large companies.
Regardless of the type of the technology or the size of the company, Stanford license agreements usually include provisions to ensure that the licensee will diligently develop the technology. Sample license agreements can be found at http://otl.stanford.edu/industry/resources/industry_res.html#forms.
What is the role of the inventor while OTL is negotiating the license agreement?
During negotiations, the inventor’s role is limited. The OTL licensing professional will generally inform the inventors when they are in the process of negotiating a license agreement. He or she may also ask the inventors to help evaluate a company’s capacity to develop licensed products.
In the case of an inventor start-up, the inventors do not participate in the actual negotiation of license agreements with potential licensees. This approach is based on the principle that Stanford faculty/employees cannot represent the company and the university at the same time. Therefore, the inventor’s role should not include representing the potential licensee or negotiating directly with OTL. In addition, if an inventor has a potential conflict of interest (COI), he or she will need to participate in a COI review.
Information about COI review and the inventor’s role at other stages of technology transfer can be found at http://otl.stanford.edu/inventors/resources/inventors_otlandinvent.html.
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.
OTL and OTL personnel have no financial stake in University licenses. If the administrative overhead portion of licensing revenue exceeds OTL’s budget, the remaining funds are allocated to the OTL Research Incentive Fund under the control of the Dean of Research, for the support of research and education across the University. As a result, we believe OTL functions effectively as an unbiased agent serving the goals and interests of the University, as well as those of inventors and others. Inventors have many vital and valued roles during the licensing process, while final decisions are made by OTL.
What are the qualifications of the licensing professionals at OTL?
The associates each have industry experience and an area of technical expertise in life sciences, physical sciences or both. In addition, the licensing staff includes several registered patent agents. Cumulatively, the licensing professionals have over 250 years of experience at OTL and over 430 years of experience overall. More information about the background and experience of individual licensing professionals can be found at http://otl.stanford.edu/about/about_who.html.
Consulting and Start-Ups: If I want to consult with a licensee, what do I do?
OTL does not make licensing decisions based on consulting arrangements nor does it negotiate or review consulting agreements on behalf of inventors. If a potential licensee is interested in having an inventor consult with the company, negotiations would be directly between the inventor(s) and the company.
If an inventor is planning to remain at Stanford while consulting with a company, the inventor should familiarize themselves with the policies of Stanford and their school relevant to consulting activities. The inventor is expected to ensure that the terms of the consulting arrangement are consistent with University polices, including those related to IP ownership and employment responsibilities (See http://otl.stanford.edu/inventors/inventors_policies.html?#links for the different polices for faculty, staff and students. Faculty should also refer to the requirements for faculty consulting activities and agreements - https://doresearch.stanford.edu/sites/default/files/documents/consulting_requirements_3.pdf)
Please notify your OTL licensing specialist and your appropriate department official(s) if you have or are contemplating a consulting agreement with a potential licensee, as this will require an ad hoc Conflict of Interest review. The Stanford DoResearch website has more information on COI policies, procedures, and the appropriate contacts for each school.
Why does Stanford have COI policies?
Consulting and other outside professional activities can provide an important means of continuing education for the faculty and can provide them with a currency and experience in aspects of their professional fields outside the context of the University itself. These activities can also provide a mechanism for transfer of knowledge from the University to the public good. These attributes of consulting may make faculty better scholars and teachers. However, the employer-employee nature of the consulting process has in it the potential for diversion of faculty from their primary activities and responsibilities. Therefore, the basic principle of this policy statement is that there needs to be a limitation upon the time that a Stanford faculty member may spend in consulting. The limits set forth [in policy (https://doresearch.stanford.edu/policies/research-policy-handbook/conflicts-commitment-and-interest/consulting-and-other-outside-professional-activities-members-academic-council-and-medical-center-line-faculty)] are intended to strike a fair balance between consulting and regular faculty duties within the University, serve to safeguard the interests of both parties, and comply with federal regulations. These arrangements are Outside Professional Activities, subject to annual (or transactional) review by the University.
I want to start a company with my invention, what do I do?
Inform the Licensing Associate responsible for the invention so they can take that into consideration when planning patenting, marketing, and licensing strategy. Although Stanford does not give preferential treatment to its inventors and their start-ups, OTL and the University recognize the importance of the inventor’s role in helping to transfer technology and in evaluating the ability of a company to develop licensed products.
More information related to start-ups can be found on this website: