Consulting and the Patent Policy

Although ordinarily any invention made by a Yale faculty member1 is owned by the University, the Patent Policy provides that the University will make no claim to an invention made by a faculty member if two tests are satisfied:

  1. the invention is unrelated to the activities for which the individual is employed, and
  2. the invention was not made or conceived under circumstances involving University facilities or personnel.

An invention made by a faculty member in the course of a paid consulting engagement for a company will satisfy the first test if the invention arises directly out of consulting activity paid for by the company, and for example, it is made in response to a problem posed by the company or is based on nonpublic information provided by the company to the faculty member for use in the consulting engagement. It will satisfy the second test if no University facilities or resources (including but not limited to space, computers, laboratory equipment and supplies) no University-administered funds and no University personnel other than the faculty member himself or herself, are involved in the conception or reduction to practice of the invention.

A faculty member may agree to assign inventions made in the course of consulting to the company only if these two tests are satisfied. All inventions and assignments made by faculty members, including those made in the course of consulting, must be reported promptly to the Office of Cooperative Research. That Office will agree to abide by reasonable confidentiality restrictions for disclosures of inventions and assignments made in the course of consulting.

1 For purposes of the Patent Policy, an invention is made by a faculty member if the faculty member would be considered an inventor of the invention under the U.S. patent law.

Wednesday, May 14, 2014