During disclosure, the inventors provide a description of the technology and an explanation of the critical solution it could provide to benefit society by submitting an Invention and Technology Disclosure Form to OTL. Submitting this information creates a record of the invention (descriptive information), the inventor(s) involved, who sponsored the work, and public disclosures and publications. For inventions coming out of a particular principal investigator's (PI) laboratory, the PI's authorization is required even if the PI is not an inventor.
2. Manager Assignment
Disclosures received by OTL are logged in, assigned a docket number, and assigned to a specific licensing manager. This manager is responsible for all actions relating to the docket going forward.
The licensing manager will meet with the inventor(s). Together they will discuss the invention and make a preliminary evaluation of manufacturing feasibility, patentability, novelty, potential applications, and possible markets. Because patenting an invention is expensive, sometimes the licensing manager decides not to pursue the commercialization of an invention. If the invention is pursued, a preliminary licensing strategy will be developed.
At this stage, the inventors may assist in the evaluation by participating with a prior art search. OTL also welcomes the inventors’ suggestions for the best strategy for licensing the technology (e.g. exclusive vs. non-exclusive).
Different inventions require different licensing strategies. For example, a basic new scientific tool that is 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 the licensee with an incentive to undertake the risky capital investments and commit the resources required for product development.
4. Patent Application
OTL does not file patent applications for all invention disclosures it receives. The licensing manager assigned to the invention must consider the chances that a technology can be successfully patented or licensed before investing in the cost of obtaining patent protection (approximately $30,000 – $45,000 in the U.S. alone). For example, a prior publication or insufficient data may make an invention difficult to patent; a small potential market or high potential development costs may make an invention difficult to license. If pursuing patent protection is warranted after taking this into account, the OTL licensing manager will work with the inventors and a patent attorney or agent on preparing the patent application.
The inventor’s expertise is crucial during patent application filing and prosecution. The 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 feedback, 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. The attorney will also 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. See our brochure on inventorship (.PDF) to learn more.
For more information about patents, go to the Intellectual Property Basics page.
Part of developing a license strategy involves seeking information and feedback on market risk from various sources. One of the ways OTL collects more information is by marketing the technology to companies who might be interested in dedicating money, people, and resources to develop it for broader use. Through marketing, OTL works with the inventors to prepare a non-confidential abstract that is made available through OTL’s website and sent directly to targeted companies. At this point, OTL appreciates the inventors’ insight regarding technical and market feasibility of the invention as well as leads for specific companies to contact. In fact, studies have shown that the best licensing leads often come from the inventors.
If a company responds to the marketing and requests additional technical information, OTL usually asks the inventors to provide that. This can be done under a confidentiality agreement if necessary.
If marketing is successful and a company shows a strong interest, then the licensing manager will begin license negotiations with the potential licensee. This starts with a license proposal (from either the licensing manager or the company) followed by negotiations which may require flexibility and creativity by both parties in order to arrive at a mutually satisfactory agreement. The terms of license agreements will vary depending on the specific technology, market, and company. 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.
At this stage, the inventor’s role is limited. The licensing manager will generally inform the inventors when they are in the process of negotiating a license agreement. He or she may also ask the inventors to help evaluate a company’s capacity to develop licensed products. In addition, if an inventor has a potential conflict of interest (COI), he or she will need to participate in a COI review.
Note that only 20-25% of invention disclosures are licensed due to the early nature of most Stanford inventions.
7. Monitoring Progress
Signing a License Agreement is the beginning of a long term relationship between Stanford and the company. The licensing manager monitors the licensee's performance for the duration of the license. Usually this is done through periodic financial or development reports that are required under most license agreements. Both the license terms and the company’s progress reports are generally considered confidential business information.
8. Royalty Sharing (Cash)
All royalty payments are collected by OTL. After the conclusion of Stanford's fiscal year (Aug. 31), cash royalties received are distributed according to the Stanford policy. Please read Research Policy Handbook § 9.1: 3.1 - Cash Royalties for more information.
9. Equity Sharing
At times OTL accepts equity in lieu of cash as part of the license issue fees. This equity is also shared under Stanford policy. After OTL has taken 15%, the equity is shared between the Inventors (1/3) and the OTL Research and Fellowship Fund (2/3) which is administered by the Vice Provost and Dean of Research. Stanford’s share of the equity is managed by the Stanford Management Company until it is liquidated.
10. Amending Licenses
As technologies, companies and markets evolve over time, it is often necessary to re-evaluate a licensing relationship to adapt to changed circumstances. Either party can request an amendment to the Agreement at any time during its life. These amendments are negotiated by the licensing manager.
Intellectual Property Basics
Read more about different types of intellectual property and how they are handled at Stanford.