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. Frequently, these sponsors are interested in transferring the technology through licensing.
After disclosing to OTL, 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). Also, if an invention is licensed, the inventors often enjoy new and enhanced relationships with businesses that can augment teaching, research and consulting.
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.
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 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.
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..
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.
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 the filing fees paid to the USPTO and the more significant patent attorney costs.
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?
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.
How is Technology transferred through OTL? How long does it take?
Technology is typically transferred through a license agreement in which the University (commonly known as the “licensor”) grants its rights in the defined technology to a third party (commonly known as the “licensee”) for a period of years, sometimes for a particular field of use, and sometimes limited to certain regions of the world.
The process of protecting the technology and finding the right licensing partner may take months – or even 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 all technologies.
What is a license?
A license is a permission granted by the owner of intellectual property that allows another party to act under all or some of the owner’s rights, usually under a written license agreement.
How is a company chosen to be a licensee?
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. 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. Typically, a university does not have multiple potential licensees bidding on an invention.
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 to the licensee to commit risk capital investments required for product development. Also, license terms for a start-up company are typically different than those for large companies. Stanford license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the university.
Sample license agreements can be found at http://otl.stanford.edu/industry/resources/industry_res.html#forms.
Additional information about OTL and the Inventor Roles in Technology Transfer can be found at http://otl.stanford.edu/inventors/resources/inventors_otlandinvent.html.
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 400 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.
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).
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.
If 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.
Additional topics on this website related to start-up licensing are:
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).