Policies and Procedures

How does OTD find a licensee?

OTD evaluates invention disclosures for their commercial potential. We typically review an invention with its inventor to learn about the potential applications, as well as to explore potential development and commercialization strategies. We develop a licensing strategy considering many factors including the technical and market risks. We also actively identify companies that might be interested in the invention through a variety of methods including extensive databases developed in-house as well as commercial databases. We create a non-confidential summary of the inventions with the inventor’s input and then directly market to these companies.

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Who has the authority to enter into agreements with industry?

OTD has signature authority on behalf of the University for license/option agreements and other agreements that pertain to intellectual property. University faculty and other University staff are not authorized to sign agreements that obligate the University to assign or license intellectual property rights to another entity.

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Do inventors participate in negotiations with potential licensees?

We encourage and welcome inventor input as a source of leads for potential licensees, for giving us a professional assessment of the technical and market feasibility of the invention, and for suggestions on how to approach the licensing of a specific technology. We also feel it is vital for inventors to know our strategy for licensing their technology. Inventors do not, however, participate in the actual negotiations of license agreements with potential licensees. Although we give careful consideration to the inventor’s input and strive to keep them informed throughout the process, it is our belief that the conflicts that may arise from an inventor’s multiple potential roles and relationships, such as a University researcher, royalty recipient, company consultant, and potential board member, make such participation unwise.

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How are Harvard inventors kept informed of potential agreements involving their discoveries?

OTD will notify inventors when it is in the process of negotiating an agreement with a specific company before signing an exclusive license agreement. If several inventions are being included in a license agreement, the inventors will be informed if the inventions are not being valued equally and how resulting income will be divided among the various inventions. If an inventor believes a potential licensee is inappropriate as an exclusive licensee, or does not agree with the proposed allocation among the various inventions, it is a matter for further discussion.

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How are potential conflicts of interest addressed?

For inventors who have a close or significant affiliation with a potential exclusive licensee (for example, as a consultant, stockholder, board member, etc.) OTD must be particularly mindful of conflict of interest issues. Harvard has a specific conflict of interest policy which deals with these situations. If an inventor requests that we license a specific technology to a particular company, OTD must ensure that any prospective corporate partner demonstrate that it has the necessary financing and management to be an effective licensee. Because specific license terms are generally considered confidential business information, if OTD shares such information with an inventor, the inventor must agree to retain that information as confidential. However, when there are conflict of interest issues, OTD may decide that sharing licensee terms with the inventor (even confidentially) would be inappropriate. OTD is available to provide information and assistance so faculty is aware of and appropriately addresses any conflict of interest issues that may arise as part of a start-up venture. Such issues often arise when faculty are involved in professional activities outside of Harvard.

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What about the licensing of unpatented materials?

Unpatented materials can be licensed on either an exclusive or non-exclusive basis. Companies may use the licensed materials for diverse purposes, including as research reagents (either for commercial distribution or internal research), screening tools, diagnostics or therapeutics. Licensing of unpatented biological materials is not subject to certain limitations that apply to the licensing of patented intellectual property. For example, royalty payments may be obtained from sales in any country, not just those countries where patent protection exists, and royalties are not limited by the life of patents. Finally, it is not necessary for Harvard to recover patent expenses out of royalties received from the licensing of unpatented materials, leaving more royalty income available for distribution, including to inventors and their research laboratories, under the Harvard IP Policy.

If you are asked to provide your unpatented or other tangible materials to anyone outside of Harvard, OTD will assist you in fulfilling that request, whether under a simple material transfer agreement or a formal license. Information on material transfers generally, as well as a request form for material transfer agreements, can be found here.

More information on the licensing of unpatented materials can be found in Sections IV and V (paragraph E.2) of the Harvard IP Policy.

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