Licenses and Other Agreements
What is a license?
A license is a permission that the owner or controller of intellectual property grants to another party, usually under a license agreement.
What is a license agreement?
License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at UCC. UCC license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the UCC.
How is a company chosen to be a licensee?
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a spin-out company is a better option. Typically, universities don’t have multiple potential licensees bidding on an invention.
What can I expect to gain if my IP is licensed?
Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. New and enhanced relationships with businesses are another outcome that can augment one’s teaching, research and consulting. In some cases, additional sponsored research may result from the licensee. Also, per UCC policy, a share of any financial return from a license is provided to the inventor(s).
What is the relationship between an inventor and a licensee, and how much of my time will it require?
Many licensees require the active assistance of the inventor to facilitate their commercialisation efforts, at least at the early stages of development. This can range from infrequent, informal contacts to a more formal consulting relationship. Working with a new business spin-out can require substantially more time, depending on your role in or with the company and your continuing role within the UCC. Your participation with a spin-out is governed by UCC conflict of interest policies and the approval of your supervisor.
What other types of agreements and considerations apply to tech transfer?
- Non-Disclosure Agreements (NDAs) are often used to protect the confidentiality of an invention during evaluation by potential licensees. NDAs also protect proprietary information of third parties that UCC researchers need to review in order to conduct research or evaluate research opportunities. UCC Innovation enters into NDAs for UCC proprietary information shared with someone outside of the UCC.
- Material Transfer Agreements (MTAs), used for incoming and outgoing materials at the UCC, are administered by UCC Innovation. These agreements describe the terms under which UCC researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA.
- Inter-Institutional Agreements also called Joint Ownership Management Agreements describe the terms under which two or more institutions (generally two universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly owned intellectual property.
- Option Agreements, or Option Clauses within research agreements, describe the conditions under which the UCC preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in a Sponsored Research Agreement to corporate research sponsors or Option Agreements are entered into with third parties wishing to evaluate the technology prior to entering into a full license agreement.
- Research Agreements describe the terms under which sponsors provide research support to the UCC. These are negotiated by RSS. More information about RSS can be obtained here.