Yale Policies, Conflict Of Interest And Conflict Of Commitment
Yale’s intellectual property (IP) policies can be found online here. For new companies started by Yale faculty, staff, or students with technology created at Yale and falling under Yale policy, ownership of IP rights will be with the University.
This ownership policy applies to any sort of intellectual property, including patents, copyrights on software, semiconductor maskworks, trademarks and tangible research property.
OCR works with Yale inventors both to facilitate technology transfer and to manage the licensing process. In the case of Yale-affiliated startups, this process often raises issues regarding conflicts of interest (COI). A full explanation of Yale’s policies and procedures for managing COI can be found in the Yale University Policy on Conflict of Interest.
OCR must be particularly sensitive to public perception when a potential licensee is a Yale-affiliated startup or a faculty-associated company. Marketing inventions and negotiating from an arms-length relationship are two ways that OCR manages potential COI.
In addition, ad hoc disclosures are required whenever a current or prospective relationship creates the potential for COI (e.g., when there are additional financial relationships proposed between a faculty member and a prospective licensee or research sponsor). A COI occurs when there is a divergence between an individual’s private interests and his or her professional obligations to the University such that an independent observer might reasonably question whether the individual’s professional actions or decisions are determined by personal financial considerations. A COI depends on the situation and not on the character or actions of the individual.
COI reviewers are concerned with whether or not a researcher/faculty member can separate University research from company research, provide unbiased and appropriate guidance and support to students, maintain academic integrity in research and education, and adhere to government mandated policies.
OCR may not be able to conclude license agreements until the appropriate COI reviews and approvals have been completed.
Yale faculty members owe their primary professional allegiance to the University. Their primary commitment of time and intellectual energies should be to the education, research, and scholarship programs of the institution.
Conflicts of commitment usually involve issues of time allocation. If a situation raising questions of conflict of commitment arises, faculty should discuss the situation with their department chair or school dean. More information about University policies concerning conflicts of interest and commitment can be found in the Yale University Policy on Conflict of Interest.
Startup companies may hire Yale inventors as consultants. Since the University does not ordinarily review consulting arrangements, inventors should be clear about the delineation between University work and private consulting. Yale inventors cannot enter into any agreement that creates copyright or patent obligations that conflict with their Yale Patent Policy Acknowledgment & Agreement to assign their rights to Yale. Faculty members must separate and clearly distinguish ongoing University research from work being conducted at the company.
Yale will ordinarily presume that intellectual property developed 1) while a faculty is consulting at the company; and 2) on an on-going company program (e.g., drug development, medical device, chip development, software issue, or any other specific company research or design activity) belongs to the company as long as there has not been more than incidental use of Yale resources. Yale resources are considered to include facilities, funding, equipment, or the time and expertise of students and post-doctoral fellows and research staff. However, Yale resources do not include use of personal computers, telephones or libraries.
When a faculty member is consulting for a startup company with which he or she has another financial relationship, it is particularly important to make certain that the separation between consulting activities and the faculty member’s academic program, including research and teaching activities, is clear to all parties. These policies also apply during sabbatical leave.
Information on requirements for faculty consulting activities can be found here. When a question arises as to the appropriate delineation between a researcher’s University responsibilities and a researcher’s consulting obligation, the researcher should discuss the situation with his or her cognizant dean. If there is a question of IP ownership, the IP should be disclosed to the University.
Inventors should take particular care in disclosing all sponsors, including companies or non-profit foundations whose funding or materials led to the invention. Sponsored research agreements specify what rights a sponsor has in any IP developed as a result of the sponsored research. Under most circumstances, Federal funding of research leading to an invention will not impose significant impediments on commercializing the invention via a startup. Funding or materials provided by other entities (such as companies or non-profit foundations) may result in license or other rights to those entities, limiting the license rights available for a startup. Corporate sponsors are typically granted rights to negotiate a license for any IP arising from sponsored research, but sponsorship agreements vary widely. The Licensing professional responsible for the invention reviews the research agreements listed on the invention disclosure to identify any licensing restrictions on the invention.