The Technology Transfer Process at a Glance (pdf)
- Disclosure. The inventor submits an Invention and Technology
Disclosure Form to OTL, thus creating a record of the invention
(descriptive information), the inventor(s) involved, who sponsored the
work, and public disclosures and publications. (See our
America Invents Act page.)
- Associate Assignment. Disclosures received by OTL are logged in, assigned a docket number,
and assigned to a specific associate for management. Henceforth, the
assigned associate is responsible for all actions relating to the docket.
- Evaluation. The associate will meet with the inventor(s). Together they will discuss
the invention and make a preliminary evaluation of manufacturing feasibility,
novelty, potential applications, and possible markets (see Invention
Evaluation Worksheet for further information). A preliminary licensing
strategy will be developed.
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.
Part of developing a license strategy involves seeking information
and feedback on market risk from various sources such as potential
licensees and venture capital firms. Confidentiality agreements may
be required to protect patent rights if no public disclosure
of the invention has occurred.
- Patent Application. Based on this information, the associate will determine whether or
not Stanford will elect title and file for a patent on the invention.
(See The Patent Approach of Stanford's OTL.)
OTL does not file patent applications for all invention disclosures
it receives due to the high cost of filing ($6,000 - $10,000). It
is desirable to have an interested potential licensees before committing
to patent filing. However, in rare cases, the commercial potential
may justify filing when guarantees of cost reimbursement by potential
licensees is not reasonably assured.
The filing and prosecution of patent applications are often done by outside
patent attorney firms. Technical competence, prior experience in similar
cases, and inventor preferences are considered by the associate in
her/his selection of the appropriate patent attorney.
The inventor's cooperation is essential in patent filing and prosecution (see OTL brochure "Who is an Inventor"). The chosen patent attorney will be familiar with the field of the invention, but he/she is unlikely to be an expert at the level of detail that makes the invention novel, useful, and non-obvious. You, the inventor, by providing both written and verbal information, will make an important difference and are indispensable for obtaining meaningful patent protection.
The patent attorney will work with you to write and review patent applications and responses to the patent office (see Instructions for Reviewing Your Patent Applications, reprinted with permission of Fenwick and West). Inventors can also assist by doing a prior art search. (For more information about patents, go to the Intellectual Property page.) The attorney will ask the people named on the disclosure about his/her contribution to the conception of the invention to determine the correct inventors on a particular patent application.
- Marketing and License Negotiation. Concurrently with making the patent decision, the associate will market
(see "Particular COI Issues")
and, if successful, begin license negotiations with potential licensees.
Companies likely to be interested are approached and are given an opportunity
to evaluate the invention (if required, on a confidential basis). Inventor's
suggestions of companies to be approached are extremely valuable.
If the company show strong interest, a license proposal is prepared. Negotiations
follow which may require flexibility and creativity by both parties
in order to arrive at a mutually satisfactory agreement. Every license
has circumstances that necessitate special considerations. For example,
startup companies typically cannot afford large initial payments but
are able to compensate with equity in the company and/or payments once
products are on the market. Note that only 20-25% of invention disclosures are licensed.
- Monitoring Progress. The signing of a License Agreement is the beginning of a long term
relationship. The licensee's performance is monitored by the associate
for the duration of the license. Most License Agreements require periodic
financial or development reports from the licensees.
- Royalty Sharing All royalty payments are collected by OTL. After the conclusion of
Stanford's fiscal year (Aug. 31), cash royalties received are distributed
Department and School royalties must be used for research or educational
purposes only and represent an important additional source of unrestricted
funds for these entities.
- 15% is deducted to support OTL's operation; any direct expenses,
such as patent costs that are not reimbursed by the licensees, are
The Net Royalties are then divided three ways:
- One third to the inventor(s);
- One third to the inventor's Department; and
- One third to the inventor's School.
- Equity Sharing. OTL may at times accept equity in lieu of cash as part of the license
issue fees. After 15% is deducted for OTL's administration fee, inventors
receive their proportional share (per #7 above) and the remainder, managed
by the Stanford Management Company, is earmarked for the OTL Graduate
Fellowship Fund and administered by the Dean of Research and Graduate
- Amending Licenses. It is often necessary to re-evaluate a licensing relationship to adapt
to changed circumstances, or to take into account new situations. Either
party can request an amendment to the Agreement at any time during its
Additional information about what to expect as an inventor working with OTL can be found in OTL and the Inventor, the OTL Inventor’s Guide (PDF), and the OTL Start-Up Guide (PDF).