OTL Initial Meeting with Inventor(s)

OTL Initial Meeting with Inventor(s)

History of OTL
1. OTL's mission statement
2. Founded in 1969, $50K in royalties
3. 22 people today, $41.2M in FY01
4. 250+ disclosures/year, file on 40%, license 20-25%
5. With over 1,500 active cases; 371 produced income in FY01, 47 produced income greater than $100K
Title to the invention and ownership rights
1. Government sponsored
2. Sponsored project agreement(s)
3. Joint inventions with other institutions
4. Affiliates programs
OTL' s Role
1. Cost: $10K to $100K for patent expenses alone
2. Our time and experience with
  - literature searches
  - patent searches
  - marketing
  - negotiation
  - license maintenance
  - infringement prosecution
3. OTL network
  - attorneys
  - existing licensees
  - potential licensees
  - Stanford reputation and backing
  - venture capitalists
What is patentable/protectable/enforceable
1. Patents
  - new, useful, non-obvious
  - broad/fundamental vs. narrow/incremental
2. Copyright
3. Trademarks
Disclosure Process
1. Standard disclosure form
2. Public disclosures and patent bars
3. Abstract/Application/Advantages
4. Copy of any technical papers, proposals, abstracts, prior art (literature & patents)
Evaluation by OTL:
1. Invention prioritization guideline
2. Is it licensable?
3. Is the revenue potential $50K - 100K/year?
Meeting with Attorneys
1. Assessment of patentability
2. Estimate of costs
3. Determination of inventorship
4. All decisions must be approved by OTL
Initial marketing to determine level of commercial interest and best licensing strategy
Filing decisions
1. Initial filing
2. First and second office action
3. Final office action
Licensing decisions
1. Option
2. Exclusive vs. non-exclusive
3. Fields of use
4. Geographies
Conflict of Interest Review
1. Inventor Letters
2. OTL Letters
Royalty Sharing Agreement
1. Standard distribution
2. Assigning shares for tax purposes
3. Timing of distributions
4. Equity - Graduate Fellowship Fund

© 2002 Stanford University