LICENSING FROM THE UNIVERSITY
Licensing a University Asset | Key Considerations and Standard Practices
Licensing a university-owned asset, typically a patent, opens the door to commercialization and societal impact. This process involves a carefully crafted agreement between the University and the licensee (any business, organization, or individual that has been granted legal permission or certain rights by the entity that owns the assets to engage in any activity related to these assets). Tulane faculty/employees are not allowed to represent a potential licensee or negotiate directly with OIPM.
Standard Terms and Conditions of a Licensing Agreement
Royalty on Sales
This is the most common form of compensation, typically calculated as a percentage of the net sales of products or services incorporating the licensed technology.
Upfront Fee
A one-time payment the licensee makes upon signing the agreement.
Milestone Fees
These are payments triggered by achieving specific development or commercialization milestones.
Maintenance Fees
Optional payments are intended to cover the ongoing costs of maintaining the patent, typically increasing with time.
Annual Minimum Royalties
Post-first sale, the licensee may be required to pay minimum annual royalties regardless of actual sales.
Equity
In some cases, universities may accept equity in the licensee company instead of, or in addition to, other forms of financial compensation.
Sublicensing
The licensee may be granted the right to sublicense the technology to third parties, often in exchange for a percentage
of the sublicensing revenue.
Patent Expenses
While universities may initially cover the costs of filing and prosecuting a patent, the agreement typically stipulates that the licensee will pay back past patent expenses and assume responsibility for ongoing patent expenses post-license, including maintenance fees and potential legal costs. This principle ensures the long-term sustainability of the OIPM legal budget and allows universities to reinvest resources in further research and innovation.
LICENSING FROM THE UNIVERSITY
Universities seek partnerships to maximize the translation of ideas, innovation, and intellectual property from Tulane to the marketplace. Therefore, they value licensees with skilled and committed (research/entrepreneurship/industry) teams who demonstrate a strong track record of bringing innovative products to market. Such partnerships ensure the optimal utilization of university assets and their translation into real-world solutions for society.
Universities value licensees with skilled and committed (research | entrepreneurship | industry) teams who demonstrate a strong track record of bringing innovative products to market. Such partnerships ensure the optimal utilization of university assets and their translation into real-world solutions for society.
Shared upside and commitment
GET STARTED
Go Green Startup License | Streamlining Innovation for University Startups
The Go Green Startup License, designed for faculty startup companies who are licensing intellectual property from the University, aims to accelerate development and commercialization at Tulane. This simplified contract process allows faculty to concentrate on innovation while attractive terms increase the success rate for startups and their appeal to investors.
Faster timeline to execution and reduced cost of negotiation.
Exclusive license with sub-licensing rights | Provides startups with full control and commercialization rights.
No upfront, annual, or milestone fees | Reduces financial burden on startups.
Performance milestones | Encourages successful business development.
Delayed past patent expense repayment.
Sliding royalty, sublicense, and equity percentages scaled by tech areas | Allows maximum deal structure flexibility.
This streamlined approach fosters a dynamic environment for technology startups, paving the way for a more sustainable future.
Licensing of assets is a value-added mechanism for Tulane to translate research into commercially viable products that benefit society. The process involves careful negotiation and consideration of various factors, with the goal of achieving a mutually beneficial agreement that fosters innovation and supports commercial and societal impact. By adhering to standard practices, universities and licensees can create successful partnerships that lead to meaningful advancements in diverse fields.
KEY DEFINITIONS
Field of Use | The license may restrict the licensee's use of the technology to specific fields or applications.
Exclusivity | The license may be exclusive, granting the licensee sole rights to the technology, or non-exclusive, allowing the university to license the technology to other parties.
Term | The license will have a defined term, after which the rights revert back to the university or expire.
