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Licensing

Once a faculty discovery has been patented, that’s not the end of the line!  The next step is to find an industry partner who would like to license the technology.

Marketing a technology:

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.

How you can help:

Your active involvement can dramatically improve the chances of matching an invention to an outside company. Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. 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.

Working with industry:

Marketing technology to a potential licensee will usually require that a Confidentiality Agreement be established.  The OVPR can negotiate these agreements for you and has the legal authority from the University to do so. 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.

Once their evaluation is completed, the potential partner may want to discuss the terms of a license. TCS will negotiate the terms of the license with input from the inventor regarding valuation, and other obligations, that occur in such legally binding agreements. Other terms that are included in a license include exclusivity versus non-exclusivity, world-wide rights versus rights in only some territories, all fields of use versus restricted fields of use, and many other considerations. On occasion, we will sign an option agreement, which gives a company the right to evaluate the technology for a limited time prior to making a decision about licensing (usually 6 months – 1 year). The TCS is experienced in negotiating contracts and is the designated legal authority from the University to do so. If a potential partner asks what kinds of terms the University would want in a license, please refer them to TCS.

Agreement Management:

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.

License Back Policy:

If TCS decides not to pursue a patent on a technology, the inventors have the option to license back the technology. The license back is a legal agreement that enables the Inventor(s) to patent and commercialize technology developed at the University.

Royalty Sharing Policy: 

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.

 

If you have any questions please contact us!

Gregory Gallo, Director, Technology Transfer

Donna Cyr, Director of Licensing, Physical Sciences

Lindsay Sanford, Director of Licensing, Engineering

Vaibhav Saini, Director of Licensing, Life Sciences

or call us at 860-679-3992