As part of our mission to commercialize University technology for public good, URVentures markets technologies for licensing and negotiates license agreements with corporations and startups for use of University IP.
Partnering with industry to develop University of Rochester research into valuable products and services.
University license agreements 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 University. A licensee is chosen in part based on its ability to do so.
Standard features of a license include negotiated financial terms, such as some combination of annual fees, milestone fees, a royalty on product sales, and reimbursement of patent costs. They may also include a minority share of equity, if a startup.
The non-financial terms of the license are equally important and include:
Diligence milestones to ensure that the technology is being developed and commercialized. For pharmaceuticals, this may include clinical trial milestones. For other products, diligence milestones may include prototypes and sales; they may also include development or investment milestones.
Reporting requirements to ensure that the company has the resources to develop the technology, is continuing to do so, or is demonstrating good faith development efforts. These requirements allow for tracking the progress of the technology toward commercialization.
Degree of exclusivity: nonexclusive, exclusive, or restricted by field of use
Reservation of rights for the Federal government (if the invention is derived from Federally-funded research), and for the University and other non-profit organizations for their research and educational activities.
All license negotiations are handled directly between URVentures and a non-inventor representative of the company in order to limit potential conflicts of interest. In addition to license agreements, URVentures also manages option agreements, inter-institutional agreements, confidential disclosure agreements and release of inventor rights agreements. Click here to view sample agreements.
URVentures licensing managers employ a variety of different strategies to market University technologies. In addition to identifying potential licensees, these efforts help us to better understand the market and gain direct industry feedback.
A central part of this process is identifying and understanding the problem solved by the technology and whether it meets a valuable unmet need of customers. We seek customer, investor, and industry input on market size, pricing, competition, scalability, distribution channels, and development milestones needed for commercialization, licensing, adoption, development, and funding.
Common Licensing and Commercialization Questions
How do you identify potential licensees?
URVentures’ licensing managers use multiple strategies to identify potential licensees and market technologies, including market research, interviews, conferences and networking. Studies have shown that a significant number of licensees were already known to the inventors (~70%); active input and participation from the inventor can be critical to identifying a licensee. Once potential companies have been identified, the inventor is usually the best person to describe the technology and its advantages.
What benefits will the inventor receive if their intellectual property is licensed?
The principal benefit of licensing and commercialization is the translation of an inventor’s research to a product that benefits society. Additionally, part of the licensing revenues are shared with the inventors and their respective departments, which can be used to further research.
What is the relationship between an inventor and a licensee? What is expected of the inventor if their technology is licensed?
Each relationship between an inventor and licensee will vary depending upon the level of interest and need. Expectations regarding the inventors involvement can be discussed during advanced discussions with potential licensees; it is not URVentures’ role to participate or define the relationship, this is a personal matter between the inventor and licensee.
Can a company license a technology and then not do anything with it?
No. License agreements include diligence milestones and reporting requirements to ensure that the licensee is moving forward with the development and commercialization of the technology. If these milestones and reporting requirements are not met, the license may be terminated.
What happens if the licensee is unsuccessful?
If the licensee is unable to meet the established diligence milestones and is unable to demonstrate a good faith effort towards doing so, the license may be terminated.
How are license revenues distributed?
Following the deduction of legal expenses incurred by the University in commercializing the technology being licensed, all licensing revenue is distributed between the inventors, the department, the school or college, and the IP pool. See the exact breakdown in the University’s Intellectual Property policy.
How are license revenues distributed if there are multiple inventors?
License revenues are typically distributed equally between the inventors.