Patent Policy for Faculty and staff
Yale Patent Policy [pdf]
updated 12.3.23
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 Yale Ventures #” 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:
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%
- We agree that Yale may rely on this Agreement in distributing the Net Royalties to us and each of us.
- 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. - 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.
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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:
- 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.
- 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 Yale Ventures, ownership of the copyright will be determined by the applicable terms of the funding agreement.
- 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.
- 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 Yale Ventures
A faculty member, staff member, fellow or student who has created and under this policy owns a copyrighted work, and who wishes to engage Yale Ventures for assistance in licensing or otherwise exploiting the copyright, may request such assistance from Yale Ventures. 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, Yale Ventures 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 Yale Ventures’ account.
1.2.2. Yale Ventures 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, Yale Ventures 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 Yale Ventures, 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. Yale Ventures 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 Yale Ventures 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 Yale Ventures 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 Yale Ventures’ 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, Yale Ventures shall prepare a report of portfolio holdings of both public and private companies and circulate it to the Investments Office.
Friday, June 21, 2019