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Policies

  1. Encouragement of Patents. In the course of teaching, research, and other intellectual and administrative activity by faculty, staff, fellows, students, and other individuals in the University community, discoveries or inventions both patentable and practical occur. Encouragement of such inventions in appropriate ways is both supportive of the public interest and consistent with the advancement of knowledge for its own sake, the primary purpose of teaching and research in a university. The University Patent Policy states the procedure to be followed in the administration of inventions which result from teaching, research, and other intellectual activity performed under University auspices except as further defined in paragraph 6.
  2. Purpose of Patent Policy. The purposes of this University Patent Policy are (1) to help assure, in the public interest, that the patentability (or other means of exploitation) and practicality of inventions will be evaluated by qualified persons, and that the income from inventions will be used to support further research or other desirable University activities; and (2) to define remuneration to the inventor or inventors (hereinafter the “Inventor”) and the University as long as the invention is productive of royalties.
  3. Procedure as to Inventions. The University has established a Committee on Cooperative Research, Patents, and Licensing appointed from among members of the faculty and administration. One function of the Committee is to advise the University on matters of patents policy and administration. The University has also established an Office of Cooperative Research to facilitate transfer of its inventions/discoveries in the public interest.
    • Patent Applications. All inventions of the kind referred to in paragraph 1 shall be reported promptly in writing to the Provost through the Director of the Office of Cooperative Research. The Director, with the advice of the Committee on Cooperative Research, Patents, and Licensing, shall conduct an initial screening followed, when indicated, by a detailed evaluation of the invention. This may be done through an internal review, or by referral to an external organization that manages the evaluation. After the evaluation, the University may, alone or with the assistance of an external organization, make application for letters patent. At the request of the Office of Cooperative Research, the Inventors shall execute assignments or other documents assigning to the University all their rights in the invention and any patent applications or resulting patents on the invention. Yale will retain title to all such patent applications and resulting patents. If the University decides that it does not wish, and has no legal obligation, to participate in the patenting or licensing of an invention, the University may release to the Inventor the University’s interest in the invention, and the Inventor shall then be free to dispose of the invention as he or she wishes.
    • License Agreement.
      1. If the University decides to participate in the patenting or licensing of an invention, the Office of Cooperative Research will seek to enter into appropriate licensing arrangements to commercialize the invention. The objective of the University is to assure the development of its technology in furtherance of its own educational mission and for the benefit of society in general. Therefore, as a general policy, the University will set the terms of its licenses so as to further the achievement of this objective. Exclusive licenses will be granted if it appears to the Office of Cooperative Research that this is the most effective way of ensuring development to the point that the public will benefit. Any exclusive license agreement will be so drawn as to protect against failure of the licensee to carry out effective development and marketing within a specified time period.
      2. In research grants or contracts sponsored by industrial companies there will typically be a section covering patents on future inventions, if any, as in all government grants. When deemed appropriate, the sponsor may be granted a license to any inventions developed during the term of the grant or contract in accordance with the policies outlined in 1) above.
  4. Division of Royalties.
    • a. Definition. For purposes of this policy, “royalties” shall include running royalties, advances against running royalties, up-front license fees, milestone payments, shares of stock or other securities issued by the licensee or another corporation (“equity”), and any other payments received by the University under a license agreement in consideration for licensing an invention, but shall not include amounts received from a licensee or others in sponsorship of research or under other agreements for other goods, services or rights.
    • b. Recovery of Expenses. Royalties shall be used first to offset out-of-pocket expenses incurred by the University in applying for, obtaining, and defending a patent and in developing and negotiating license agreements during the life of the patent. Expenses for this purpose will include fees paid to outside legal, consulting, and licensing organizations and any other out-of-pocket costs incurred by the University. The fees paid to the external individuals or organizations for such services may be of fixed dollar amount or may be in the form of an agreed-upon fraction of the gross royalty income, if any, or in any other form directly associated with commercialization/licensing of the invention. In addition, 10% of Royalties, after reduction as provided above for out-of-pocket expenses, received in any year from an invention made on or after April 11, 1992 shall be retained by the University and applied toward the general support of the Office of Cooperative Research; provided, that if the total of such recoveries in any year exceeds the Office’s approved budget, the excess shall be allocated in a pro rata basis among those inventions from which it was recovered and shall be distributed as part of Net Royalties in accordance with subparagraph (d).
    • c. Net Royalties. After recovery of expenses by the University as provided in subparagraph (b), the remaining royalties will be designated Net Royalties.
    • d. Distribution of Net Royalties. The Net Royalties as defined above shall be divided between the Inventor(s) (as defined under the patent law) and the University as follows:
      • The first $100,000 of Net Royalties
        50% to the Inventor(s)
        50% allocated to the general support of University research, as described in paragraph 5.
      • Net Royalties between $100,000 and $200,000
        40% to the Inventor(s)
        60% allocated to the general support of University research, as described in paragraph 5.
      • Net Royalties exceeding $200,000
        30% to the Inventor(s)
        70% allocated to the general support of University research, as described in paragraph 5.

      For purposes of applying the above Net Royalty distribution formula (i.e., whether aggregate Net Royalties are $100,000 or less, between $100,000 and $200,000, or more than $200,000), equity shall be deemed to have the per-share value agreed upon in a good-faith negotiation between the University and the licensee at the time the license agreement is executed, and the equity shall be deemed received after all cash Net Royalties received at or before the time the equity is issued. In the absence of such negotiated value, the Inventors shall receive 32% of the equity Net Royalties.

      In its discretion, the University may either distribute equity to the Inventor(s) when it is received or arrange for the licensee to issue the Inventor’s share of equity directly to the Inventor(s).

      As used in this document, the term “Inventor” may represent two or more individuals. These individuals will be expected to agree among themselves on the fractional distribution of the “Inventor” share of any royalties. A written agreement must be signed by all the individuals involved, and deposited for the record in the Office of Cooperative Research. (Appropriate forms are available from the Office of Cooperative Research.) If no written agreement has been deposited at the time of a distribution of Net Royalties, the Inventors’ share of such distribution shall be divided equally among the Inventors.

    • e. Overriding Agreements with Third Parties. The foregoing provisions of this paragraph and the rest of this University Patent Policy are subject to the terms of applicable grants and contracts with third parties. See paragraph 7.
  5. General Research Support from Net Royalties. The University’s share of Net Royalties will be used in support of research, or if not specifically prohibited by the funding agency contract, will accrue to the Science Development Fund or other appropriate research fund, and will be allocated by the Provost. Before allocating funds, the Provost shall consult with the relevant subdivision of the University concerning the research to be supported.
  6. Inventions Not under University Auspices. Inventions by University employees usually result from teaching, research, or other intellectual activity involving University facilities or personnel. Accordingly, all inventions by University employees must be reported to the Office of Cooperative Research. When the University determines that an invention by a University employee is unrelated to the activities for which the individual is employed and has not involved the use of University facilities, then the University will make no claim to such an invention. All inventions made or conceived under circumstances involving University facilities or personnel are the property of the University.

    An invention made by a faculty member in the course of a paid consulting engagement for a company may be assigned to the company only if it is unrelated to the activities for which the faculty member is employed by Yale and it was not made or conceived under circumstances involving University facilities or personnel. Such an invention will be considered unrelated to the activities for which the faculty member is employed by Yale 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 be considered not to have involved the use of University facilities 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. All inventions made by Yale faculty members in the course of consulting, and any assignments of rights to such inventions, 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.

  7. When Arrangements with Outside Organizations Override This Policy. Arrangements with outside organizations that propose terms which are exceptions to this Policy must be submitted to the President or Provost for review by the University with the advice of the Committee on Cooperative Research, Patents, and Licensing. If approved by the University the terms shall be binding upon all members of the faculty, staff, and employees of the University conducting such research or utilizing such facilities, and will supersede the provisions of the patent policy to the extent that the terms are inconsistent therewith.
  8. Inventions by Staff Resulting from Performance of the Responsibilities of Their Employment. Not infrequently, in the course of carrying out assigned responsibilities of their employment, staff employees may make commercially useful inventions or develop licensable property, (i.e., the employee received salary or wages for the specific function of developing the work which ultimately has commercial value). In such cases, there is no presumption that the University will share royalty (or other) revenues with the employee. Normally, the University does not share revenues with staff except in cases where it appears that the invention or commercially valuable property has not resulted from the performance of assigned duties. In these instances, the invention (or other commercially valuable work) will be reviewed by the Committee on Cooperative Research, Patents, and Licensing and a recommendation will be made to the Provost. In these cases, the division of royalties as specified in paragraph 4(d) of this policy may not apply and the Provost may substitute different provisions after review of the recommendations of the Committee on Cooperative Research, Patents, and Licensing.
  9. Governmental Rights in Certain Inventions. Current governmental regulations permit educational institutions to retain rights and title to patentable inventions which results from federally funded experimental, developmental and research work. Retention of rights by University is contingent upon the fulfilling of a number of obligations on the part of the University and of the Inventor(s) and these obligations must be discharged in order to protect the interests of all parties. Though the University may retain rights and title to such patentable inventions, the federal government retains a royalty free license and places certain other restrictions upon the ultimate disposition of the patents(s). Details of the implementing regulations may be obtained from the Office of Cooperative Research. Incumbent upon members of the University community who apply for and receive federal funding to support research or who use federal monies in the conduct of their research is the requirement for written agreement that they will promptly disclose patentable inventions to the University and will execute all instruments necessary to protect the rights of the government and/or the University. Forms for this agreement will be provided to all faculty and will be available for other participants (i.e. collaborators, post-doctoral students, graduate students) from the appropriate departmental chairman or, at the Chairman’s option, from the Departmental Business Office.
  10. Revocation or Amendment. This patent policy is subject to revocation or amendment by the Corporation. In case of doubt as to the interpretation of this patent policy, a definitive interpretation will be provided by the President or Provost after receiving the advice of the Committee on Cooperative Research, Patents, and Licensing. This patent policy is effective as to all inventions/discoveries made on or after February 23, 1998.

Complete form online

I understand that Yale University has a Patent Policy that applies to inventions made under University auspices. I also understand that Yale’s funding agreements with third parties, including the United States Government, impose certain obligations with respect to rights in inventions. In order to facilitate compliance with the terms of those agreements and applicable Federal regulations, I agree as follows:

  1. I will abide by the Yale University Patent Policy, including any amendments to it adopted from time to time, and I will execute any assignments or other documents necessary to comply with its terms.
  2. If in the course of research conducted under University auspices, as defined by the Patent Policy, I make any invention (whether or not patentable), I will provide to the Yale Office of Cooperative Research a written disclosure of the invention, I will and hereby do assign to Yale my rights in that invention as provided by the Patent Policy and I will cooperate with that Office in the preparation of any patent applications.
  3. I do not have any consulting or other agreement with any third person or organization which grants rights that are in conflict with this agreement, nor will I knowingly enter into any such agreement.

 
Date: __________________________________

Signature: ______________________________

Name (print or type): ______________________

Department: _____________________________

Please fax the fully signed Patent Policy Acknowledgment & Agreement to OCR @ 203.436.8086 or mail the Agreement to OCR at 433 Temple Street, New Haven.

THIS AGREEMENT is entered into by and among name(s) (together, the “Inventors”), effective upon the date of the last Inventor signature below.

WHEREAS, on disclosure date the invention entitled (“disclosure title OCR #” the “Invention”) was disclosed to Yale University on which each of the Inventors has been identified as a co-inventor (See Exhibit A, if applicable); and

WHEREAS, the Invention was first conceived and reduced to practice by the Inventors when each was a faculty member or a student at Yale University (“Yale”) and therefore, the Invention and any resulting patent(s) are subject to the provisions of the Yale University Patent Policy (the “Yale Patent Policy” or the “Policy”); and,

WHEREAS, the Invention is subject to certain rights in the United States Government because the Invention was first conceived and reduced to practice during the conduct of research that was supported by grants made to Yale by the United States Government;  and

WHEREAS, pursuant to the Yale Patent Policy, the Inventors have assigned their respective individual and joint rights to the Invention to Yale; and

WHEREAS, paragraph 4(d) of the Yale Patent Policy establishes the terms and conditions under which Yale distributes “Net Royalties” (as defined by the Policy) to inventors and co-inventors, and provides that co-inventors should, among themselves, enter into a written agreement establishing their mutually acceptable fractional shares of any Net Royalties, and that Yale will distribute Net Royalties to each of them as co-inventors in accordance with those shares established in such a written agreement;

NOW, THEREFORE, pursuant to the provisions of the Policy, subject to applicable United States laws and regulations, and intending to be bound hereby, the Inventors hereby agree as follows:

  1. We agree to the following percentage distribution formula to be applied to any Net Royalties received by Yale now or in the future with respect to the Invention.
      Full Name Email address (required)
    _____ % to Inventor #1    
    _____ % to Inventor #2    
    _____ % to Inventor #3    

    Total: 100%

  2. We agree that Yale may rely on this Agreement in distributing the Net Royalties to us and each of us.
  3. This Agreement, including the Exhibit attached hereto:
    (a) constitutes the entire agreement among the parties concerning the subject matter hereof, and supersedes all other and prior agreements, writings, or understandings, oral or written, with respect thereto.
    (b) shall be binding upon each of the Inventors and his heirs, successors, assigns, and legal representatives.
    (c) may be amended only by a writing signed by all parties.
    (d) shall be governed by Connecticut law, without regard to its conflict of laws principles
    (e) may be executed in separate counterparts, each of which when so executed shall constitute an original, but all of which together shall constitute one and the same instrument.
  4. Each party to this Agreement represents that he has the right, authority, and capacity to enter into this Agreement.

IN WITNESS WHEREOF, we have placed our hands and seals below.

Date: _____________________________ Signature:_______________________________________________
 

Inventor #1 Full Name: _______________________________________________________________________

Home Address: _____________________________________________________________________________

 

Date: _____________________________ Signature:_______________________________________________
 

Inventor #2 Full Name: _______________________________________________________________________

Home Address: _____________________________________________________________________________

Date: _____________________________ Signature:_______________________________________________
 

Inventor #3 Full Name: _______________________________________________________________________

Home Address: _____________________________________________________________________________


Exhibit A

(If applicable)

If no patent information is to be listed then Exhibit A remains with only the above detail.

~~~~~~~~~~~~~~~~~~~

If PI has patent information that should be listed, below is the detail for the IDA Exhibit A template.

Pull all patent applications

Filing Date, Application #, and Title

Wednesday, March 12, 2014

General

In the course of teaching, research and other intellectual and administrative activity at the University, faculty, staff, postdoctoral fellows and postdoctoral associates, students and others may create works that are protected by copyright. The federal Copyright Law provides that most original works of authorship are protected by copyright automatically when they are fixed in tangible form.

Copyrightable works of authorship include, among other categories, books, articles and other written works; musical and dramatic works; pictures, films, videos, sculptures and other works of art; computer software; and electronic chip designs. Works by Yale faculty, staff, postdoctoral fellows, postdoctoral associates and students may be found in any of these categories. As a matter of fundamental policy, the University encourages the wide dissemination of scholarly work produced by members of the Yale community, including copyrightable works.

Ownership

Under the Copyright Law, the copyright to a work created by a person in the course of his or her employment belongs to the employer rather than to the individual creator. The law provides, therefore, that works created by faculty members in the course of the their teaching and research, and works created by staff members in the course of their jobs, are the property of the University.

It is traditional at Yale and other universities, however, for books, articles and other scholarly writings by a faculty member to be deemed the property of the writer, who is considered to be entitled to determine how the works are to be disseminated and to keep any income they produce. This tradition reflects the University’s commitment to encourage members of the Yale community to write and to publish what they wish. In recognition of that longstanding practice, the University disclaims ownership of works by faculty, staff, postdoctoral fellows and postdoctoral associates and students, except in the following cases:

  1. Assigned Tasks. The University will own the copyright to works created (i) by staff members or postdoctoral fellows or postdoctoral associates in the course of their assigned duties of employment, (ii) by student employees in the course of their assigned duties of employment, including duties as teaching or research assistance, or (iii) by faculty members as part of an assigned task where the assignment explicitly states that the work will be owned by the University.
  2. Outside Agreements. Where copyrighted materials are developed by an investigator in the course of sponsored research funded by an outside agency pursuant to an agreement approved by the Office of Grant & Contract Administration or the Office of Cooperative Research, ownership of the copyright will be determined by the applicable terms of the funding agreement.
  3. Patentable Works. Where a copyrighted work, such as certain computer software, is also patentable, the University Patent Policy will apply to it, notwithstanding any inconsistent provisions of this policy.
  4. Commitment of University Resources. When the University makes substantial commitments of resources to, or expenditures of resources for, a project, the University may be entitled to ownership of any works created. The term “substantial” is not meant to include ordinary use of Yale’s libraries, faculty offices, departmental office equipment or University owned personal computers. The Provost will determine whether substantial commitments exist in a particular case and whether the University ought therefore not to disclaim ownership of such works. Where feasible, the Provost will make this determination before the work is created and at the beginning of the project, and will so inform the principal investigator or other responsible faculty member.

In any case in which there is a question about the University’s ownership of a work, the issue will be decided by the Provost in consultation with the Committee on Cooperative Research, Patents and Licensing and the Office of the General Counsel.

Students and Postdoctoral Fellows

Because students and postdoctoral fellows are in many cases not employees of the University, the Copyright Law would not automatically make the University the owner of copyright to their works. To assure fairness, the provisions of this Copyright Policy are made applicable to students and postdoctoral fellows, especially as stated in ‘Ownership: 1. Assigned Tasks’ above, as a condition of their enrollment or affiliation at the University.

Use of Income from University-Owned Works

Division. Any income which the University receives from the licensing, sale, lease, or other use of copyrighted works owned by the University pursuant to this Copyright Policy will be shared as determined by the University in its sole discretion.

The University will ordinarily share net income with the creator or creators of the work on the same terms as those of the University Patent Policy. For this purpose, net income means gross income less the University’s costs for securing the copyright, for defending it against infringement and for licensing or otherwise using the work.

Disposition of University Shares. The portion of net income that is not paid to the creator or creators of a work will be used as determined by the University in its sole discretion. The University will ordinarily use that portion of net income for the purpose of research or scholarly activity, with preference being given to the field in which the work was generated.

Assistance from the Office of Cooperative Research

A faculty member, staff member, fellow or student who has created and under this policy owns a copyrighted work, and who wishes to engage the Office of Cooperative Research for assistance in licensing or otherwise exploiting the copyright, may request such assistance from the Office of Cooperative Research. If that Office provides such assistance, all net income from its licensing efforts will be shared between the University and the creator(s) as provided in the Patent Policy.

Modification: Effective Date

This policy is subject to modification or revocation by the Corporation at any time, in its discretion. This policy is effective from the date of approval by the Corporation with respect to works created after that date and shall remain in effect until modified or revoked.

Thursday, March 13, 2014

In our efforts to identify the optimal approach to commercialize Yale’s scientific discoveries, a start-up company can sometimes represent the best opportunity for the development of early-stage technology. In fact, in some cases, a start-up may be the only avenue available.  Because a start-up company’s survival is tied to the development of the licensed technology, its research and development effort is focused on that technology.

 

Typically, these new ventures have little cash and no revenues.  Under these circumstances, imposing a heavy cash burden would diminish the company’s ability to attract initial investors and would pull critical cash from the R & D efforts.  Success in such efforts is required both to meet Yale’s due diligence milestones and to allow the company to secure additional financing.

 

As a result, from time to time, Yale will accept equity in the form of stock, options or warrants as part of the consideration for licensing intellectual property or assisting in the formation of a new venture.  Such stock is not taken in preference to cash; rather, in the absence of sufficient cash compensation and where it is believed the best terms possible were negotiated, stock is taken as added compensation.  License agreements with equity generally will also include such common cash considerations as: (1) up-front license fees, (2) minimum annual and/or milestone payments, (3) royalties on sales, and (4) a percentage of sublicense income.  The stock is viewed as a reasonable business solution to enhance the overall financial package - acceptable to the company and its investors, while providing an opportunity for the University to increase its potential return. 

 

In those instances when Yale does accept equity in a new venture, the following policies and guidelines will apply:

1. General policies for the management of equity in new ventures:

1.1. If the stock is received in lieu of cash in consideration for a license, the stock will be treated as royalty income and distributed to inventor(s) in a timely manner in accordance with the University’s Patent Policy.  For the purposes of this distribution the stock will be valued at the per share value that it held when originally issued to the University.  Following issuance of the stock to the inventor(s), it shall be the sole responsibility of the inventor(s) to manage their shares and to comply with any tax, legal, or contractual obligations associated with the distribution, ownership or disposition of those shares.

1.2. As a general practice, when a stock held for the benefit of the University is about to go public, OCR will seek the assistance of the Investments Office and/or Investment Accounting in liquidating the stock.  

1.2.1. Prior to liquidation, the stock must first be transferred to Yale’s custodian (currently Northern Trust), which typically occurs once the stock is publicly traded and freely tradable (i.e., any “lock-up” period has expired and legends have been removed). Once transferred, the Investments Office will liquidate the shares consistent with its approach to liquidating donated securities and then transfer the resulting income to the Office of Cooperative Research’s account.  

1.2.2. OCR will not initiate the process of transferring management of any stock to the Investments Office at any time it is in possession of any material non-public information about the stock or company.  Moreover, OCR will not share any material non-public information with any member of the Investments Office or Investment Accounting with respect to any publicly traded stock or company, or with respect to any company that has filed a registration statement with the Securities Exchange Commission. 

1.3. On a case-by-case basis, the University may wish to make exceptions to this general practice in order to fulfill other strategic goals.  

1.3.1. Recommendations for exceptions will be reviewed by an ad hoc review committee including the Director of the Office of Cooperative Research, and representatives from the Vice Presidents for Finance and Administration, and for New Haven and State Affairs (“Ad Hoc Review Committee”).  

1.3.2. This committee will advise the Provost on the recommendation.  The Provost will make the final decision with respect to all such exceptions.

1.3.3. Exceptions will be reviewed at least annually.

 

2. Guidelines for acquiring equity holdings in new ventures:

2.1. OCR should not invest Yale’s operating funds in the formation of companies. 

 

2.2. Decisions to invest in later rounds of private financing for companies managed by OCR should be reviewed by the Ad Hoc Review Committee.  Decisions to invest in later rounds should be made by personnel insulated from the management of the license-derived stock. 

2.3. Equity positions managed by OCR should be minority positions.  Yale should accept that its position may be diluted as the company raises additional capital.

2.4. Yale, as an institution, may retain the right to designate a representative to the Board of Directors of new ventures in which it holds equity.  

2.4.1. If Yale designates a Board member, the representative will resign from the Board prior to the company’s registration with the Securities and Exchange Commission for an initial public offering.  

2.4.2. During the term of Yale’s Board participation, any fees or other forms of compensation accruing to the Board member shall be the property of the University and will be credited to OCR’s general account.

2.4.3. The individual designated to serve on the Board will be eligible for mandatory indemnification to the extent permitted under Connecticut law.

2.5. Faculty and staff participation in new venture activity (whether by stock ownership, Board membership, consulting agreement or otherwise) is governed by the University’s policy on Conflicts of Interest and Conflicts of Commitment, and must comply with that policy in all respects. 

2.6. On a monthly basis, the OCR shall prepare a report of portfolio holdings of both public and private companies and circulate it to the Investments Office.

 

Friday, June 21, 2019