Research and inventions made at a university

A student develops a prototype while working in a university lab. A faculty adviser helps refine it, a grant paid for the equipment, and an outside company supplied a material. A startup opportunity appears. The student asks a natural question: whose invention is this?

Split it into four questions: who had the idea, who is an inventor, who owns the patent rights, and who can license them. The answers come from documents, not job titles: your university's IP policy, the patent or IP agreement you signed when you joined, the grant or award terms, and any agreement that came with a material or a sponsor. 1 5

The institution may treat different work differently

Universities do not all use one ownership rule, so read your own. Stanford shows how a policy sorts the work:

• Inventions. Stanford owns potentially patentable inventions that faculty or staff, including student employees, conceive or first reduce to practice in the course of their university responsibilities or with more than incidental use of university resources, whatever the source of funding. 1
• Students and visitors who are not employees. The same rule reaches students, visiting scholars, industrial personnel and fellows who take part in research projects; they sign a form of Stanford's Patent and Copyright Agreement (SU-18). 5
• Copyright. Pedagogical, scholarly and artistic works stay with the creator, except where law or a sponsored agreement requires otherwise. 1

So a student essay, a scholarly article, a patentable instrument and a sponsored project can land with different owners at the same university. Find the agreement you signed at enrollment or hiring and read it next to the policy. Do not wait for a written all-clear: Stanford says it will not confirm in writing whether an invention falls outside its policy, so the inventor has to make that call in good faith. 1

Funding adds obligations without answering everything

Federal money does not make an invention public domain. Under the Bayh-Dole Act, a university that receives NIH or other federal funding can keep ownership of an invention made in the funded work, in exchange for these duties 2:

1. Report the invention to the funding agency within two months after the inventor reports it to the university.
2. Tell the agency within two years of that disclosure whether it will keep title.
3. File a patent application within one year of electing title.
4. Give the government a license to practice the invention, and report on patenting, licensing and commercialization.

Universities and agencies report through iEdison. 2 Stanford adds that the government's license is royalty-free for governmental purposes and that the university must prefer U.S. manufacturers and small businesses and share royalties with inventors. 1 The clock starts with your report to the university, so a slow internal disclosure eats into the university's deadlines.

NSF awardees typically keep principal rights to inventions if they disclose them to NSF's patent team, and NSF has separate rules for copyrightable material made under an award. 3 A company that pays for research holds whatever rights its sponsored-research agreement gives it; paying is not the same as owning. At Stanford, a sponsored agreement can even override the creator-keeps-copyright rule. 1 Ask the office that signed the agreement what it grants the sponsor before you assume either way.

Publication can be both a goal and a disclosure event

A thesis, conference poster, preprint or public demonstration spreads the knowledge, and it also starts patent clocks. The U.S. gives inventors a one-year grace period after their own public disclosure; many other countries refuse a patent when the disclosure came before the filing. 4 Stanford's handbook puts it plainly: an invention becomes unpatentable in the U.S. unless an application is filed within 12 months of publication, and unpatentable in most foreign countries unless the application is filed before publication. 5

You do not have to choose between publishing and patenting. Disclose the invention to your technology-transfer office before you submit the paper or poster, and tell them the submission date so they can decide whether to file first. See Before you show an invention to the world for the order of steps.

If the work is already public, write down the date and keep the exact version that went out (the preprint, the slides, the poster file), and hand both to the office. Those dates decide which options are still open.

Materials and data can travel under separate terms

A sample, dataset, software package or prototype can arrive under an agreement that limits who may receive it and for what use. Stanford treats tangible research property, including biological materials, software, databases, prototype devices and research data, under its own policy, and incoming and outgoing material transfer agreements go through its Industrial Contracts Office. 1 Before anything moves into a startup, find the agreement it arrived under and ask that office whether it allows commercial use or transfer.

Only the university's licensing office can sign away university IP. At Stanford, inventors cannot sign agreements that obligate the university to assign or license IP, and inventors in a faculty-associated company do not negotiate the license themselves. 1 If you plan to license the invention into your own startup, have a lawyer who represents you, not the university, review the license before you sign it.

Make your first meeting with the technology-transfer office count. Bring:

1. What you contributed, and when, with lab notebooks or commits that show it.
2. Everyone else who contributed: adviser, labmates, outside collaborators.
3. Every source of money: grant or award numbers, sponsored-research agreements, your employment status.
4. Every material, dataset or piece of software you received from outside, and the agreement it came with.
5. Your publication plan, and every past talk, poster, preprint or demo with its date.