Colleges and universities are the source of some of the most innovative technology and research in the world today. Every day, researchers in fields such as medicine, engineering, and computer science are working at colleges and universities to develop solutions to complex problems. When these researchers develop new technology, the rights are typically transferred to the college or university and can then be made available for commercialization.
Most colleges and universities have an office dedicated to managing and licensing these technologies. These are often called “tech transfer” offices. Tech transfer offices serve as the intermediary between the technology controlled by their institution and companies or members of the public that want to use that technology.
Sometimes, the researchers that invented the technology want to build a company around their work. Even as an inventor of the technology, these researchers must still go through the tech transfer office to secure the rights to use the technology for commercial purposes. This requires the negotiation of a license from the college or university.
The terms of a license can vary greatly depending on the industry, the value of the technology, and the interest in licensing the technology. Often, licenses will require upfront payments and future royalties, granting of equity in the company licensing the technology, and payment of costs associated with protecting any intellectual property covering the technology. These terms, however, are heavily negotiated and require consideration of dozens of factors. For example, licenses may be exclusive or non-exclusive and may limit the right to use the technology to certain fields or geographic regions.
Whether you are a researcher looking to bring your invention to the market or a company looking to secure the rights to valuable technology controlled by a college or university, you should consider hiring an attorney with experience navigating the “tech transfer” process. Licensing arrangements with colleges or universities may last decades and should be negotiated for the long-term.
This post is the first in a series about building a startup around technology licensed from a college or university. Continue to follow our blog for more posts in this series.