Summary. The working documents of a technology transfer office, annotated.

Template 1 — Invention disclosure form

Owner: the inventor. The two-month agency disclosure clock starts when this is submitted.

INVENTION DISCLOSURE                    RECEIVED: ______  ID: ______

1. TITLE AND SHORT DESCRIPTION
   [What it is, in terms a non-specialist evaluator can assess]

2. WHAT PROBLEM DOES IT SOLVE, AND HOW IS IT BETTER?

3. CONCEPTION
   Date first conceived: ______
   Notebook / record reference: ______
   Date first reduced to practice: ______
   Evidence: ______

4. FUNDING — LIST EVERY SOURCE
   Federal awards (agency, award number, PI, dates): ______
   Industry sponsors (company, agreement, dates): ______
   Foundation / internal: ______
   Which funds supported CONCEPTION? ______
   Which supported REDUCTION TO PRACTICE? ______

5. CONTRIBUTORS — everyone who contributed, for inventorship analysis
   Name / role / institution or company / assignment agreement on file?

6. DISCLOSURES — MADE OR SCHEDULED
   [ ] Journal submission   date: ____  [ ] Published   date: ____
   [ ] Conference talk      date: ____  [ ] Poster      date: ____
   [ ] Preprint             date: ____  [ ] Thesis      date: ____
   [ ] Public grant abstract             [ ] Company presentation
   [ ] Social media / website
   *** ANY OF THESE MAY FORFEIT FOREIGN RIGHTS ***

7. MATERIALS RECEIVED FROM OUTSIDE
   Under an MTA? From whom? Reach-through terms?

8. COMMERCIAL CONTACTS ALREADY MADE

9. INVENTOR SIGNATURES AND DATE

The two fields that matter most are 4 and 6. Section 4 drives the Bayh-Dole analysis; section 6 determines whether foreign rights still exist.

Template 2 — Bayh-Dole deadline tracker

Event Date Deadline Deadline date Completed Confirmation ref.
Inventor disclosure to TTO —
Agency disclosure 2 months from above
Election of title 2 years from agency disclosure
Initial filing 1 year from election, or statutory bar
Statutory bar date (if any) —
Foreign filing decision Per clause
Government support statement in application At filing
Issuance report Per clause
Utilization report Periodic
Abandonment notice (if applicable) In advance

Rules: calendar at intake, not at review. Extensions are requested in writing and the response is filed. One named person owns the queue.

Template 3 — Present assignment clause

The fix for the Stanford v. Roche problem. Use everywhere: employees, students, postdoctoral researchers, visiting scientists, and contractors.

Assignment. I hereby assign, and agree to assign, to [Institution] my entire right, title, and interest in and to all Inventions that I conceive or first actually reduce to practice, alone or with others, (a) in the course of my employment or appointment with [Institution], (b) with the use of [Institution] facilities, equipment, or funds, or (c) in the performance of work under any agreement to which [Institution] is a party. This assignment is effective upon conception or reduction to practice without further action.

Disclosure. I will promptly disclose all such Inventions to [Institution] in the form it requires.

Cooperation. I will execute all documents and take all actions reasonably requested to perfect, record, prosecute, maintain, and enforce [Institution]'s rights, during and after my association with [Institution]. I appoint [Institution] my attorney-in-fact, coupled with an interest, to execute such documents if I am unavailable or fail to act within [15] days of request.

Prior and outside obligations. I represent that I am not subject to any agreement that conflicts with this assignment, and I will notify [Institution] before entering any agreement that would assign rights in Inventions to any third party.

The last paragraph is the one that would have prevented Stanford v. Roche. The words "hereby assign" are what make the rest work.

Template 4 — License term sheet

Term Entry
Licensed patents
Field of use
Territory
Exclusivity Exclusive / co-exclusive / non-exclusive — subject to the government license and reserved research rights
Reserved rights Institution and other nonprofits, research and educational use
Sublicensing Permitted? Income share and decline schedule
Upfront fee
Annual maintenance Amount, escalation, creditable?
Running royalty Rate, and the net sales definition
Minimum annual royalties Trigger date
Milestone payments Event and amount
Diligence milestones Objective, dated — see Template 5
Patent cost reimbursement Past costs; ongoing; annual cap
Prosecution control Who instructs; approval over abandonment and country selection
Enforcement Who may sue; joinder; recovery sharing
Indemnity and insurance Institution's standard requirements
Reporting Royalty reports; utilization data for Bayh-Dole
Assignment To an acquirer of all or substantially all of the business, as of right
Termination For breach with cure; licensee convenience; sublicense survival
Bayh-Dole flow-through Government license, § 204 domestic manufacture, march-in, reporting

Template 5 — Milestone schedule

Objective and dated. "Commercially reasonable efforts" alone is a term both sides regret.

# Milestone Deadline Evidence of completion Consequence of failure
1 [e.g., analytical validation at defined performance] [date] [report delivered] 180-day cure
2 [e.g., pilot-scale demonstration at defined throughput] [date] 180-day cure
3 [e.g., regulatory submission filed] [date] Field reduction
4 [First commercial sale] [date] Conversion to non-exclusive

Accompanying provisions:

Development plan. Attached as Exhibit [ ] and updated annually. Licensee will report progress against it each [year].

Extension. Licensee may extend any milestone once by [12] months on written notice, payment of $[ ], and a showing of good-faith diligence.

Cure. Licensor will give written notice of any missed milestone. Licensee has [180] days to cure or to propose an amended plan.

Consequence. If uncured, Licensor may, at its election, convert the license to non-exclusive, reduce the Field, or terminate.

Why institutions need this: failure to take effective steps toward practical application is itself a march-in trigger under 35 U.S.C. § 203.

Template 6 — Net sales definition with combination allocation

"Net Sales" means the gross amounts invoiced by Licensee and its Affiliates and Sublicensees for Licensed Products sold to third parties, less the following to the extent actually incurred and separately stated: (a) trade, quantity, and cash discounts; (b) credits for returns and rejections; (c) freight and insurance charges; (d) sales, use, value-added, and excise taxes; and (e) customs duties.

Affiliate transfers. Sales to an Affiliate for resale are not Net Sales; the Affiliate's resale to a third party is.

Non-cash consideration. Where a Licensed Product is transferred for non-cash consideration, Net Sales are the fair market value of the Licensed Product.

Combination Products. Where a Licensed Product is sold together with one or more components that are not Licensed Products ("Other Components"), Net Sales for that sale are calculated by multiplying gross amounts invoiced by the fraction A/(A+B), where A is the invoice price of the Licensed Product sold separately and B is the invoice price of the Other Components sold separately. If either is not sold separately, the parties will agree an allocation based on the relative fair market value or, absent agreement, the relative cost of goods. In no event will the fraction be less than [0.20].

Where disputes come from: affiliate transfer pricing, bundled products, and combination allocation. Define them at signature; reconstructing three years of allocations under audit pressure is expensive and adversarial.

Template 7 — Bayh-Dole flow-through clause

Government rights. Licensee acknowledges that the Licensed Patents may be subject to the Bayh-Dole Act and its implementing regulations, and that: (a) the United States government retains a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the Licensed Patents throughout the world on behalf of the United States, and the license granted here is subject to that license; (b) the United States government retains march-in rights under 35 U.S.C. § 203; (c) any product embodying a Licensed Patent, or produced through its use, that is sold in the United States will be manufactured substantially in the United States as required by 35 U.S.C. § 204, unless a waiver is obtained. Licensee will cooperate with Licensor in any waiver application; and (d) Licensee will provide Licensor with the information Licensor requires to satisfy its reporting obligations, including utilization data, within [30] days of request.

Government support statement. Licensee will ensure that any patent application it controls covering a Licensed Patent includes the statement required by 35 U.S.C. § 202(c)(6).

Template 8 — Sponsored research agreement outline

1.  SCOPE OF WORK  — Exhibit A, narrowly defined. NOT "research in
    Dr. X's laboratory."
2.  PERIOD OF PERFORMANCE AND BUDGET (Exhibit B)
3.  PRINCIPAL INVESTIGATOR — named; what happens on departure
4.  INTELLECTUAL PROPERTY
    4.1 Background IP stays with its owner
    4.2 Institution owns inventions of its personnel; Sponsor owns
        inventions of its personnel; joint inventions jointly owned
    4.3 SPONSOR OPTION — Exhibit C sets the PRE-AGREED license terms
        (field, royalty range, milestone framework); exercisable
        within [90] days of disclosure
    4.4 License to Institution background IP to the extent necessary
        to practice the Results
    4.5 Federal funding overlap: Bayh-Dole applies and cannot be
        overridden by this Agreement
5.  PUBLICATION
    5.1 Manuscripts and abstracts to Sponsor [30-60] days before
        submission
    5.2 Sponsor may request removal of its Confidential Information
    5.3 Sponsor may request delay of up to [60-90] additional days
        for patent filing
    5.4 NO RIGHT TO SUPPRESS RESULTS
6.  CONFIDENTIALITY
7.  REPORTS AND DELIVERABLES
8.  EQUIPMENT AND UNSPENT FUNDS
9.  PUBLICITY — neither party uses the other's name or marks
10. INDEMNIFICATION, INSURANCE, LIABILITY
11. TERM AND TERMINATION
12. EXPORT CONTROL — no controlled information without prior agreement

Section 4.3 is where the company should spend its capital. An option "on commercially reasonable terms to be agreed" is an agreement to agree. Pre-agreed terms in Exhibit C are worth far more and institutions grant them more often than companies expect.

Template 9 — Material transfer agreement key terms

Term Provider position Recipient position Usual landing
Permitted use Only the stated research Broad research use Stated research plus reasonable extensions
Modifications Provider owns Recipient owns Recipient owns; Provider owns unmodified Material
Reach-through to inventions Ownership or royalty None None; sometimes a narrow option to negotiate
Publication Review and delay Free to publish 30–60 day review for patent filing
Onward transfer Prohibited Permitted to collaborators Prohibited without consent
Use in humans Prohibited — Prohibited
Term and return Return or destroy on request Retain Destroy on completion; certify
Warranties None; as-is Some assurance of identity As-is, with identity confirmation

Reach-through is the fight. A provider seeking ownership of, or a royalty on, anything invented using a research reagent is asking for compensation disproportionate to the contribution. Institutions refuse ownership and sometimes accept a narrow option.

Template 10 — Inter-institutional agreement outline

Execute before licensing, ideally before filing. Without one, each co-owner may license non-exclusively without the other, and no exclusive license is possible.

1.  THE JOINT INVENTION AND THE PATENTS
2.  OWNERSHIP — joint, in proportions [equal / per contribution]
3.  LEAD INSTITUTION
    3.1 Lead controls prosecution and licensing
    3.2 Non-lead receives copies, may comment, consents to defined
        actions (abandonment, country selection, exclusive licenses)
4.  COSTS
    4.1 Sharing formula
    4.2 What happens if one institution declines to fund a country
5.  LICENSING AUTHORITY
    5.1 Lead may grant licenses binding both parties
    5.2 Approvals required for exclusive grants
6.  INCOME SHARING — percentages, and what is netted first
7.  BAYH-DOLE — which institution discloses, elects, files, reports;
    both may have obligations
8.  INVENTOR ROYALTY SHARES — each institution pays its own inventors
9.  ENFORCEMENT — who may sue; joinder; recovery sharing
10. DISPUTES AND WITHDRAWAL
11. TERM

Template 11 — Startup license accommodations

Issue Standard term Startup accommodation
Upfront fee $50,000–$500,000 $5,000–$25,000, or deferred to first financing
Past patent costs Due at signing Deferred to first financing above $[X]; or converted to equity
Ongoing patent costs As incurred Annual cap; institution may decline countries beyond it
Annual maintenance Fixed and escalating Waived until first financing; then escalating
Equity — [1–10]% at formation; no anti-dilution past a defined round
Milestones Scientific only Tied to financing events as well as scientific ones
Insurance Full at signing Phased; product liability required before first human use
Board seat — Generally decline, to avoid fiduciary complications

Conflict-of-interest requirements to attach:

  • Inventor's equity, options, and roles disclosed
  • Inventor does not negotiate the license for the institution
  • Management plan for student supervision on company-funded work
  • Documented and priced use of institutional facilities; private business use reviewed where bond-financed

Template 12 — Utilization report request

Dear [Licensee]:

Under Section [ ] of the License Agreement dated [ ], and in order for [Institution] to satisfy its reporting obligations under the Bayh-Dole Act and 37 C.F.R. Part 401, please provide the following for the period [ ]:

  1. Whether any Licensed Product has been commercially sold. If yes, the date of first commercial sale.
  2. Gross sales and Net Sales of Licensed Products, by product and by country.
  3. The stage of development of any Licensed Product not yet sold, and the steps taken during the period toward practical application.
  4. Whether any Licensed Product sold in the United States was manufactured substantially in the United States, and where.
  5. Any sublicenses granted, with the sublicensee's identity, field, and territory.
  6. Any patents or applications on improvements.
  7. The number of persons employed in connection with Licensed Products, if known.

Please respond by [date]. If any item is not applicable, please say so expressly rather than omitting it.

Why the specificity: the institution cannot report what it does not know, and a partial response leaves a reporting gap that appears in an audit.

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