If you start a new venture to market the IP, your venture must first license the IP from the university. If you are a member of the venture, you must be aware of potential conflicts of interest between your academic research and commercial development.
In either case UIRF is here to assist you at each step to gain the maximum benefit for all parties. For more information concerning these steps, see our Venture Creation Overview.
The UIRF Licensing Process
The UIRF site describes the licensing process for established companies. While these general steps apply to all licensees, new spinout ventures based on university IP include other considerations. For example, UIRF is open to accepting equity in lieu of partial license fees for university based ventures.
Licensing for University Ventures
Licensing includes a number of criteria, fees, and milestones. These are a balance between risk to the university, and minimizing the financial burden on the new venture so that it can be successful. Typical fees include:
- Patent costs incurred before licensing
- Ongoing patent costs
- License issue fees
- Annual maintenance and milestone payments
The level of risk is related to:
- Stage of IP development
- Management team
- Projected cost and time to commercialization
- Size of market
- Exit strategy and time frame
The Licensing Application
- Download the following presentation to get an overview of how a few university Technology Transfer Offices (TTO) license their IP in these cases: University Licensing Examples Herve Lebret
- Before starting the licensing process you need to have a Go-to-Market Plan ready that includes the following:
- Business Plan
- Product Development Plan (When will proto-type, beta, and release products be ready)
- Sales Plan (How and when will sales or sub-licensing revenues occur)
- Capitalization Plan (When and how much investment is needed)
- Management Plan (What types of management do you need and when)
- To start the licensing process, download the UIRF Licensing Summary Sheet. This includes directions, an example worksheet, important definitions of terms, and a blank worksheet. Contact your Ventures Mentor, or your UIRF License Manger for assistance.
- Once the licensing terms have been reviewed and accepted, the License Manager will generate an Option Agreement, Term Sheet, or License Agreement as appropriate.