Stanford Board of Trustees
Now in Policy Details
Establishes policy and procedures for disclosure and assignment of ownership of potentially patentable inventions created in the course of an individual’s University responsibilities, participation in research project at Stanford or with more than incidental use of Stanford resources.
1. Patent Policy
All potentially patentable inventions conceived or first reduced to practice in whole or in part by members of the faculty, graduate students, postdoctoral fellows, staff or other employees (including student employees and temporary employees) of the University in the course of their University responsibilities or with more than incidental use of University resources, shall be disclosed on a timely basis to the University. Title to such inventions shall be assigned to the University, regardless of the source of funding, if any.
This policy also extends to other individuals not identified in the paragraph above who participate or intend to participate in research projects at Stanford (including but not limited to students, visiting faculty and scholars, industrial personnel, fellows, etc.). In the case of such individuals, all potentially patentable inventions conceived or first reduced to practice in whole or in part in the course of their participation in research projects at Stanford, or with more than incidental use of University resources, shall be disclosed on a timely basis to the University, and title shall be assigned to the University, unless a waiver has been approved.
The University shall share royalties and other income derived from licensing inventions assigned to the University with the inventor(s) in accordance with this policy.
The inventors, acting collectively where there is more than one, are free to 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 U.S. Federal Government grants or any other agreements that supported or related to the work.
If the University cannot, or decides not to, proceed in a timely manner to patent and/or license an invention, it may reassign ownership to the inventors upon request to the extent possible under the terms of any grants or other agreements that supported or related to the work.
Waivers of the provisions of this policy may be granted by the Vice Provost and Dean of Research (VPDOR) on a case-by-case basis, giving consideration among other things to University obligations to sponsors, whether the waiver would be in the best interest of technology transfer, whether the waiver would be in the best interest of the University and whether the waiver would result in a conflict of interest. In addition, the VPDOR may expand upon these provisions and shall adopt rules, based on the same factors as well as appropriateness to the University's relationship with inventors, for the ownership of potentially patentable inventions created or discovered with more than incidental use of University resources by students when not working as employees of the University, by visiting scholars and by others not in the University's employ.
The updated licensing policy, as set forth in Section 3 of this policy, shall apply to all inventions that are licensed under an agreement executed on or after November 1, 2023. All inventions that are licensed under an agreement executed prior to November 1, 2023 shall be governed under the previous Patent Policy version dated June 19, 2013.
2. Administrative Procedures
A. Office of Technology Licensing
The mission of the Office of Technology Licensing (OTL) is to promote the transfer of Stanford technology for society's use and benefit while generating unrestricted income to support research and education. The University has authorized OTL to be responsible for the administration of the University's invention reporting and licensing program, the commercial evaluation of inventions, patent filing decisions, petitions to agencies for greater rights in inventions, and negotiation of licensing agreements with industry, and to make decisions related to the above activities on behalf of the University as the owner of the intellectual property.
B. Patent and Copyright Agreements
All faculty, graduate students, postdoctoral fellows, staff and other employees (including student employees and temporary employees) must sign the Stanford University Patent and Copyright Agreement (referred to as "SU-18"). In addition, other individuals not identified above who participate or intend to participate in research projects at Stanford (including but not limited to students, visiting faculty and scholars, industrial personnel, fellows, etc.) must also sign a form of this Patent and Copyright Agreement. A variation of this agreement has been created for individuals with prior obligations regarding the disclosure and assignment of intellectual property. See Patent and Copyright Agreement for Personnel at Stanford who have a Prior Existing and Conflicting Intellectual Property Agreement with Another Employer (SU-18A). All individuals described in this paragraph are collectively referred to as IP Assignment Required Signatories.
Each department is responsible for getting the Patent and Copyright Agreement signed, normally at the time of the individual's initial association with Stanford.
Notwithstanding the foregoing obligation for the Patent and Copyright Agreement, IP Assignment Required Signatories acknowledge that they are bound by this Policy by using Stanford funds or other resources, accepting or continuing Stanford employment, or by participating in a Stanford collaboration, research, or other sponsored agreement. Accordingly, each IP Assignment Required Signatories acknowledges that they hereby irrevocably assign all rights, title, and interests in and to all intellectual property rights (including but not limited to patent applications and patents which may issue from such intellectual property rights) in accordance with the relevant Patent and Copyright Agreement, effective as of their first date of the use of Stanford funds or resources, Stanford employment, participation in a Stanford collaboration, research or other sponsored agreement, whichever occurs first.
For the avoidance of doubt, as provided by California law, Stanford’s Patent and Copyright Agreement (“SU-18” or “SU-18A”) does not apply to an invention which qualifies fully under the provisions of Labor Code section 2870, which provides as follows:
Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer's business, or actual and demonstrably anticipated research or development of the employer or (2) Result from any work performed by the employee for the employer.
Labor Code sections 2870 may be found HERE.
C. Invention Disclosures
An invention disclosure is a document which provides information about inventor(s), what was invented, circumstances leading to the invention, and facts concerning subsequent activities. It provides the basis for a determination of patentability and the technical information for drafting a patent application. An invention disclosure is also used to report technology that may not be patented but is protected by other means such as copyrights.
Inventors must prepare and submit on a timely basis an invention disclosure for each potentially patentable invention conceived or first actually reduced to practice in whole or in part in the course of their University responsibilities or with more than incidental use of University resources.
A disclosure form describing the invention and including other related facts should be prepared by the inventor and forwarded to OTL, or to the SLAC Inventions Administrator, as appropriate. Forms may be requested from these offices.
The following practical considerations relate to invention disclosures:
Individuals covered by this policy are expected to apply reasonable judgment as to whether an invention has potential for commercial marketing. If such commercial potential exists, the invention should be considered "potentially patentable," and disclosed to Stanford.
Individuals may not use University resources, including facilities, personnel, equipment, or confidential information, except in a purely incidental way, for any non-University purposes, including outside consulting activities or other activities in pursuit of personal gain.
"More than incidental use of University resources" would include:
The use of specialized, research-related facilities, equipment or supplies, provided by Stanford for academic purposes
Significant use of "on-the-job" time
The occasional and infrequent use of the following would typically not constitute "more than incidental use of University resources":
Routinely available, office-type equipment, including desktop computers and commercially-available software
Reference materials or other resources collected on the Stanford campus, and which are generally available in non-Stanford locations.
D. Alternative Disposition of Rights
The inventor, or inventors acting collectively when there are more than one, is free to place inventions in the public domain if that would be in the best interest of technology transfer and if doing so is not in violation of the terms of any U.S. Federal Government grants or any other agreements that supported or governed the work. The University will not assert intellectual property rights when inventors have placed their inventions in the public domain.
If OTL cannot, or decides not to, proceed in a timely manner to patent and/or license an invention, OTL may reassign ownership to the inventor or inventors upon request to the extent possible under the terms of any agreements that supported or related to the work. In the case of an invention resulting from a government-sponsored project, where OTL cannot or chooses not to retain ownership, rights would then typically be retained by the government. In such cases, the inventor may request and be granted rights by the sponsoring agency to an invention made under such an award, provided that a well-conceived and detailed plan for commercial development accompanies the request.
The University encourages the development by industry for public use and benefit of inventions and technology resulting from University research. It recognizes that protection of proprietary rights in the form of a patent or copyright are often necessary - particularly with inventions derived from basic research - to encourage a company to risk the investment of its personnel and financial resources to develop the invention. In some cases an exclusive license may be necessary to provide an incentive for a company to undertake commercial development and production. Nonexclusive licenses allow several companies to exploit an invention.
The research and teaching missions of the University always take precedence over patent considerations. While the University recognizes the benefits of patent development, it is most important that the direction of University research not be unduly influenced by patent considerations or personal financial interests.
In exchange for licensing inventions, the University receives “Patent Income” that may come in the form of royalties, equity in the licensee company, annual maintenance fees, milestone fees, and/or other licensing fees and payments actually received by Stanford, but does not include any reimbursement of out-of-pocket costs, any in-kind contributions or considerations, or any income received by Stanford as a result of Stanford’s exercise of equity purchase or other investment rights.
Some inventions are co-developed by inventors at multiple institutions with shared ownership of the intellectual property. In these situations, Patent Income will be shared between the institutions. In addition, some University research is sponsored and funded by entities that are entitled to receive a share of Patent Income in exchange for their research support.
OTL typically handles the evaluation, marketing, negotiation and licensing of University-owned inventions with commercial potential. In some instances where an invention is co-owned with other institutions or where a research sponsor is entitled by contractual agreement to manage inventions resulting from the sponsorship, primary responsibility for marketing, negotiation and licensing may be managed by the other institution or research sponsor.
Patent Income received by the University, after deducting amounts due to other institutions and entities, will be allocated as follows:
An allocation of 15% to cover the administrative overhead of OTL is taken from gross Patent Income, followed by a deduction for any directly assignable expenses, such as patent filing and other legal related fees.
After deducting amounts due to other institutions and entities, OTL administrative overhead and other directly assignable expenses, the remaining Patent Income is allocated as follows:
For the first $3,000,000 of cumulative distributable Patent Income from a single license:
33.34% to the inventor
24.66% to the inventor's department (as designated by the inventor)
21.0% to the inventor's school
21.0% to the office of the VPDOR
For cumulative distributable Patent Income from a single license exceeding $3,000,000, the portion of Patent Income over $3,000,000 is allocated:
33.34% to the inventor
14.66% to the inventor's department (as designated by the inventor)
26.0% to the inventor's school
26.0% to the office of the VPDOR
The inventor will be provided a one-time election immediately prior to when the license agreement is executed to assign the department's share of the Patent Income, or a part thereof, based on support of the work, to their independent laboratory, center or institute under the office of VPDOR, or a research institute under their school subject to approval from the cognizant dean responsible for that institute. Similarly, when more than one department is involved, the inventor shall designate the distribution of the department and school shares based on support of the work. Disagreements involving Patent Income distribution will be reviewed and resolved by OTL; involved parties may appeal the OTL resolution to the Provost.
When equity is one of the components of Patent Income included under a license agreement, the inventor will be provided a one-time election immediately prior to when the license agreement is executed:
The inventor may elect to have their allocation of equity in the licensee (“Inventor’s Shares”) distributed to them as soon as practicable following execution of the license. In this case, it shall be the sole responsibility of the inventor to manage the Inventor’s Shares and to comply with any tax, legal or contractual obligations associated with their distribution, ownership, and disposition.
Alternatively, the inventor may elect to have the Inventor’s Shares held by the University for the inventor’s benefit and defer receipt of income associated with the Inventor’s Shares. In the ordinary course, the University intends to hold and dispose of the Inventor’s Shares in the same manner as its own equity in the licensee and, upon a sale of the Inventor’s Shares for cash, distribute to the inventor their allocation of the proceeds in accordance with the Patent Income allocation described above as well as any deferred income.
All Patent Income received by departments, schools, OTL and VPDOR will be subject to the university’s infrastructure charge, or for School of Medicine departments, the School of Medicine infrastructure charge.
A. What is a Patent?
A U.S. patent is a grant issued by the U.S. Government giving an inventor the right to exclude all others from making, using, or selling the invention within the United States, its territories and possessions for a period of 20 years. When a patent application is filed, the U.S. Patent Office reviews it to ascertain if the invention is new, useful, and nonobvious and, if appropriate, grants a patent - usually two to five years later. Other countries also grant similar patents. Not all patents are necessarily valuable or impervious to challenge.
B. What is an Invention?
An invention is a novel and useful idea relating to processes, machines, manufactures, and compositions of matter. It may cover such things as new or improved devices, systems, circuits, chemical compounds, mixtures, etc. It is probable that an invention has been made when something new and useful has been conceived or developed, or when unusual, unexpected, or nonobvious results have been obtained and can be exploited.
An invention can be made solely or jointly with others as coinventors. To be recognized legally, a coinventor must have conceived of an essential element of an invention or contributed substantially to the general concept. (See section 2.D. for information and procedure regarding the formal disclosure of an invention.)
Not all inventions are patentable. Questions relating to patentability are often complex and usually require professional assistance.
General criteria for patentability
An important criterion of patentability is that an invention must not be obvious to a worker with ordinary skill in that particular field. It must also be novel, in the sense that it not have been previously publicly known or used by others in this country or patented or described in a printed publication anywhere.
Loss of patentability
Inventions that are patentable initially may become unpatentable for a variety of reasons. An invention becomes unpatentable in the United States unless a formal application is filed with the U.S. Patent Office within 12 months of disclosure in a publication or of any other action which results in the details of the invention becoming generally available.
Circumstantial impairment of patentability
Many other circumstances may impair patentability, such as lack of "diligence." For example, unless there is a record of continuous activity in attempting to complete and perfect an invention, it may be determined that the invention has been abandoned by the initial inventor, and priority given to a later inventor who showed "due diligence."
International variation of patentability regulations
Regulation covering the patentability of inventions and application filing procedures vary from country to country and are subject to change. It is important to note that an invention is unpatentable in most foreign countries unless a patent application is filed before publication.
D. Value of Unpatented Inventions
An invention, although unpatentable for various reasons, may still be valuable and important - for example, trade secrets and technical "know-how" encompassing proprietary information of a valuable and confidential nature.
Agencies sponsoring research at Stanford usually require reports of all inventions, whether or not they are considered patentable.
Current Version: 06.19.13
Original Version: 06.20.80