Stanford Policies on Intellectual Property
Inventorship & 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. See the Research Policy Handbook for more information.
Pursuant to Stanford's present policy on royalty sharing (see the Research Policy Handbook § 9.1: 3.1 - Cash Royalties for more information), 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.
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.
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. For more information, please see ICO's page on sponsored research agreements.
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.
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. 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.
University Policies on Conflict of Interest
Stanford University is an institution of public trust; faculty must respect that status and conduct their affairs in ways that will not compromise the integrity of the University or that trust. For more information, see University Policies on COI.
Stanford's policies regarding intellectual property are contained in the Research Policy Handbook. 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. 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. The University's Tangible Research Property (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.
For information on Stanford's Trademark Licensing Program, please contact the Director of Business Development.
Inventors and creators are required to make a good faith determination of whether or not an invention or copyrighted work falls within the Stanford policy. Stanford is not in the position to make such a determination and relies on its inventors and creators to understand the policy. Therefore, Stanford will not confirm in writing whether or not an invention or copyrighted work falls outside the policy through a “waiver of rights” letter.
Licensing & Negotiations
Clinical Technology Assessment Agreements
Under Clinical Technology Assessment Agreements (CTAA's), a company will provide experimental drugs to a researcher who administers the drug to patients under a specific protocol. The protocol must be approved by the Human Subjects Panel and, in most cases, the FDA. The CTAA is conducted for the purpose of generating data to evaluate the safety and efficacy of the drug. In most cases, the drug is patented by the company. Contracts for these studies are handled by the Office of Sponsored Research in conjunction with the Research Management Group. For more information on Clinical Trials at Stanford, contact the The Stanford Center for Clinical and Translational Education and Research (Spectrum).
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.
Faculty, staff and students at Stanford will likely, at one time or another, intersect with federal regulations that impose access, dissemination or participation restrictions on the transfer of items and information regulated for reasons of national security, foreign policy, anti-terrorism or non-proliferation. In these situations, the Stanford community is dealing with US export control regulations. For more information, review Stanford's Export Control Policy.
Industry Interactions Policy
The Stanford Industry Interactions Policy, which became 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 applies 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 umbrella policy was updated to include, among other changes, the CME Commercial Support Policy, which was introduced in 2008. The SIIP website contains the policy as well as further information and resources for applying it. We encourage you to become familiar with its contents, especially the sections that apply directly to your areas of responsibility.
Licensing Faculty-Associated Companies
OTL must be particularly sensitive to public perception when a potential licensee is a faculty-associated company. The University is obligated to maintain an arms-length relationship in all business transactions. Therefore, license negotiations and agreements with inventor start-ups must fall within the normal range of terms and conditions of similar licenses to non-inventor-associated companies. Furthermore, because Stanford faculty/employees cannot represent the company and the University at the same time, the inventors do not participate in the actual negotiation of license agreements with potential licensees. See University Policies on Conflict of Interest for links to relevant University policies.
Material Transfer Agreements (MTAs)
Information about MTAs for materials being sent to Stanford from industry (incoming MTAs) and the distribution of tangible research materials to other entities (outgoing MTAs) is available from the Industrial Contracts Office.