Our Policies

Our Policies

OTL and the Inventor: Roles in Technology Transfer

Patent Policy
Copyright Policy
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

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.

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.

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.

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.

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.

(Tax Treatment of Royalties)

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.

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.

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.

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.

Outgoing Material Transfer Agreements (MTAs)
Stanford and OTL have endorsed a policy regarding the distribution of tangible research materials. This policy (see below) 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.

Material Transfer Agreement (MTA) Policy

Obtaining a specific Material Transfer Agreement (MTA) for each exchange of materials between academic and other non-profit institutions has become an increasingly onerous barrier to the free and open exchange of scientific information and materials. Seeking to affirm that collegiality, science, and sharing should take precedence over commercial considerations among researchers at such institutions, the universities identified below have adopted the following policy:

Subject to our obligations to existing research sponsors and licensees, we agree:

1) that a specific MTA is not required when our investigators and their research colleagues elsewhere are exchanging non-hazardous or non-human biological materials for in vitro research use; or

2) when thought to be necessary, that we will use the Uniform Biological Material Transfer Agreement (UBMTA) or the Simple Letter Agreement (SLA) recommended by the NIH, whenever possible.

Furthermore, we will encourage our investigators to support the above policy when entering into sponsored agreements that involve transfers of materials.

We agree that if materials are transferred without a specific MTA, the transfer will be presumed to be made under the terms stated in the UBMTA even though no written agreement has been signed. Recipients of biological materials are expected to obtain consent from the original provider before passing materials on to others and to acknowledge the source of the materials in resulting publications and presentations.

We encourage other academic and non-profit institutions to adopt this policy.

California Institute of Technology

Columbia University

Cornell University

Harvard University

Howard Hughes Medical Institute

Johns Hopkins University

Massachusetts Institute of Technology

Princeton University

Stanford University

The University of British Columbia

University of Chicago

University of Michigan

University of Pennsylvania

Washington University in St. Louis

Yale University

Links to University Policies on Conflict of Interest

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

The Stanford Industry Interactions Policy

The Stanford Industry Interactions Policy, which will become 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 will apply 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 Web site at http://med.stanford.edu/coi/siip/ contains the policy as well as further information and resources for applying it. I encourage you to become familiar with its contents, especially the sections that apply directly to your areas of responsibility.

Thank you for your attention to this important new policy.