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University-Industry Engagement Advisor

Dartmouth adds new faculty option for handling IP and start-up equity

By Jesse Schwartz
Published: October 24th, 2018

Dartmouth College has found a new way to reward inventors for their contributions in the form of a new default distribution method for portfolio licenses — The Dartmouth Case Method. It takes into account how many times an inventor appears on different cases that are licensed by a company. The school’s Technology Transfer Office recommended a change to the “default” distribution method for allocation of license income among Dartmouth inventors, which comes into play when the inventors have not filed an agreement with the TTO spelling out their royalty shares.

TTO Director Nila Bhakuni says that the department was struggling with how to handle multiple inventions under one license agreement. They needed a method that was consistent, equitable and fair.

“We were looking for a mechanical, consistent way of allocating proceeds from a license agreement,” Bhakuni says. “We wanted to limit the administrative burden to the TTO while providing clarity and consistency to its community. Our method protects the little guy and also rewards the creative inventors.”

Prior to this, there were no written policies about distributions. The change was needed to align with the TTO’s new policies and practices — implemented in March, 2016 — to be transparent and consistent. “We needed to take a fresh look at the policies to see just how they were incentivizing intellectual property creation and commercialization,” Bhakuni says.

The current policy consolidates the previously in effect patent and copyright policies into one comprehensive policy and clarifies who owns IP generated by members of the Dartmouth community. It:

  • encourages entrepreneurship at Dartmouth by creating “Option 2,” which allows Dartmouth
  • inventors/authors/creators to require the college to transfer college-owned IP to the inventor’s start-up
  • company;
  • codifies past operating practices with a spirit of support for entrepreneurship; and
  • harmonizes inconsistent past practices.

Several conditions must be met to trigger Option 2, the most important of these being:

  • All inventors/creators authors must agree to transfer ownership of the invention;
  • The inventor company must provide evidence that it has at least $250,000 in cash financing
  • or an SBIR/STTR award (or equivalent) for invention development;
  • If the invention was federally funded, the sponsoring federal agency must approve the transfer;
  • and
  • The college receives a four percent founder’s equity stake in the inventor company.

A detailed article on the new policy appears in the October issue of Technology Transfer Tactics. To subscribe and get the full article, along with the publication’s entire 11-year archive of best practices, case studies and success strategies for TTOs, CLICK HERE.

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