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Marketing to Find a Licensee

TCS uses many sources and strategies to identify potential licensees and market inventions. Sometimes existing relationships of the inventors, TCS and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complimentary technologies and agreements to assist our efforts. Faculty publications and presentations are often excellent marketing tools as well.
Licensees can be identified in many ways. First, the inventors are often aware of the commercial companies who would be interested in the work. Industry-specific marketing efforts, including trade show participation, affiliations and market research carried out by TCS, also seek to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature; often these can prove to be potential licensees.
Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. Licensees are also identified through existing relationships of the TCS staff. We attempt to broaden these relationships through contacts obtained from personal networking and from website inquiries, market research, industry events and the cultivation of existing licensing relationships.
Confidentiality Agreements, named Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs), are agreements between UConn and an outside entity (company, person). These are used to facilitate discussions of information that the parties wish to keep out of the public view. For companies, sharing of their business needs can lead to developing solutions with UConn personnel; however, they may not want such needs to be known to their competitors. For UConn, maintaining confidentiality can preserve patent rights to inventions. Many university offices and the programs of OVPR can provide NDAs/CDAs and can ensure proper agreements are put in place. Please see: http://www.policy.uconn.edu.
Yes. An invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each for a unique field of use (or area of utilization/application), or geography.
Option agreements are used so that companies can be exposed to a technology and consider whether or not securing a license makes sense. They are limited in time in order for feasibility to be investigated; an option does not grant commercial rights. An option can be either exclusive (where for a given limited timeframe no other options will be granted to evaluate a piece of intellectual property) or non-exclusive (where other options may also be granted from UConn). The outcome of an option is a go/no-go decision by the company to license the technology.
Every license is unique in that it brings together university intellectual property to solve a company’s specific problem. Once the company identifies the intellectual property, terms of a license need to be negotiated to a mutually acceptable conclusion. Negotiation and execution can take as little as a few weeks to over a year, depending on the complexity and the response times of all those involved.
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and TCS Licensing Director work together as a team to market and promote use of the technology.
TCS tracks the progress of the licensee towards milestones and goals established in the signed agreement. Licenses usually state that technology progress reports must be submitted regularly until a product hits the market. Some companies will fund research and development of the technology at UConn in the inventor’s lab. Others may offer a consulting position to the inventor as they develop a product at the licensee’s facilities.TCS usually continues to manage the patents, if there are any, and will sometimes need to handle patent interferences, patent infringement or deal with arbitration or litigation surrounding a technology or a license. Once a product is offered for sale, then TCS requires quarterly reports and royalty payments from the licensee, although specific terms vary from license to license. Payouts are made according to the royalty sharing policy after UConn has recouped its out-of-pocket expenses, primarily the cost of obtaining patent protection.
Inventor contribution percentages refer to the share of net royalty income that is split amongst the inventors; the standard disposition is equal sharing. However, it is up to the inventors to propose and agree on a different formula and communicate that agreement to TCS. This is accomplished by filling out the back of the Invention Disclosure Form. Invention-related income is allocated based on the University’s Royalty Sharing Policy.