As a university researcher with a new invention, there are many options for connecting with industry partners. Do you license your invention? Find an industry partner to help develop it further? The options can seem overwhelming.
If you are affiliated with a university, you can work with your Technology Transfer or Sponsored Research office to choose the best type of agreement for your emerging technology. Read on for five of the most common technology transfer agreements.
1. Patent Licenses
One common practice is for institutions to license patents to companies. There are options for both exclusive and non-exclusive agreements. Patent agreements are negotiable, and there is not a standard across universities.
The agreement will also outline development milestones that correlate with royalty payments.
Milestones for commercialization may include:
- Receiving a baseline level of funding
- Submitting a product for regulatory review
- Conducting alpha or beta testing
- Making a product generally commercially available
- Reaching a sales threshold
2. Technology Licenses
Similar to patent licenses, technology licenses deal with innovations such as software or designs that can be licensed to a company. While they are similar, technologies have separate agreements than patent licenses.
3. Options to Grant Licenses
An “option to grant” license (often referred to as an “option”) is an agreement that provides a company a time limited right to obtain the license. Options are done for a fee and are common in sponsored research agreements. Because university research is often within the realm of basic research, this provides potential industry partners the opportunity to validate technology before taking on the full risk of a patent or technology license.
Depending on the technology – and other factors – options last between six and twelve months. A key difference between options and license agreements is that options do not allow for the commercialization and selling of the technology.
4. Sponsored Research Agreements
Your technology may need additional research or funding to get to the next phase of discovery. At a university, the Office of Sponsored Research Agreements is responsible for sponsored research. These types of agreements are formed when a company provides either funding or resources to a university research project. The sponsoring partner will typically receive preference to licenses and IP that from result the project.
Additionally, sponsored research agreements often give a private company the option to non-exclusively license any institution-owned, background intellectual property used in the research activities, because they may be necessary for commercialization efforts.
5. Materials Transfer Agreements
Material transfer agreements (MTAs) are used to manage sharing research materials between the university and industry partners. A materials transfer agreement is very similar to a non-disclosure agreement, but covers the limited use of physical materials rather than (or in addition to) information.
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