Commercialization of University IP

 IP Commercialization refers to the licensing of technology to a third party (a corporate partner)who helps take the technology from the lab/farm to the marketplace.

  •  Make a positive impact on society- solve a problem that doesn’t have an answer or provide an improved answer.
  • A sense of personal fulfillment.  
  • Recognition and financial rewards- the university shares licensing income with the inventor(s).
  • Meet the obligations of a research award- the Bayh-Dole Act obligates A&T to evaluate the opportunity to protect and commercialize IP.
  • Create educational opportunities and job leads for students based on engagement with corporate partners.

Via a license agreement, NC A&T grants a corporate partner (the licensee) rights, including patent rights, to a defined technology for a fixed time, geography, and field of use. Licenses typically require the licensee to meet certain defined milestones and/or to make payments to the university.

Please reach out to the Office when you believe you have created or discovered something unique with potential commercial or research value. Complete and submit an Invention Disclosure before publicly disclosing your technology (preferably before submitting a manuscript for review) and then help the Office to identify potential licensees. (Studies have shown that over 70% of all licenses are executed with commercial entities known by the inventor, so your contacts can really help!) Once interested companies are identified, the inventor is the best person to describe the details of the technology and its technical advantages. It would also help if you keep the Office informed of upcoming publications or interactions with companies related to your intellectual property.

You are welcome to contact the Office any time you have questions. We can address individual questions, present to research seminars, or help teach classes about IP protection.

The process of protecting IP and finding the right licensing partner may take years to complete. The length of time depends on the development stage of the research, the applicable market, competing technologies, the amount of work needed to move the research from the benchtop to market-ready status, and the resources & engagement of the licensees and the inventor(s).

Licensing a technology depends on the attractiveness of the invention, its stage of development, the number and strength of competing technologies, and the size of the market. Most university inventions tend to be in an early development stage and therefore require substantial commercialization investment, making it challenging to attract a licensee. Even after a conversation is started with a licensee, the negotiation of terms of a license acceptable to both parties can take some time.

To identify prospective licensees, it is necessary to conduct market research, including assessing the landscape of complementary/competing technologies. Technologies are advertised through our website and that of AUTM (Association of University Technology Managers), targeted outreach to prospective licensees, and even inventor presentations at conferences and industry events. Due to the small size of the Office, we are working with a vendor to assist us with investigation of and outreach to prospective licensees.

Yes, an invention can be licensed to multiple licensees, either via non-exclusive licenses or via exclusive licenses, limited by unique fields-of-use or by geography.

A License Agreement describes the rights and responsibilities related to the use of intellectual property developed at NC A&T. License Agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable benefit to the university.

Per University policy, a share of any financial return from a license is provided to the inventor(s)- 15% gross or 50% net revenue.

Many inventors enjoy the satisfaction of knowing their research is benefiting the general public. Relationships with licensees can also support one’s teaching and research (and in some cases result in consulting opportunities). Occasionally, a licensee may support sponsored research on campus to push development of the technology forward.

Many licensees require the active assistance of the inventor to facilitate their commercialization efforts, at least at the early stages of development. This can range from infrequent, informal contacts to a more formal consulting relationship.

Due to the early stage development of most university IP, licensees often have to further develop the licensed invention to enhance the technology, reduce risk, prove reliability, and/or satisfy market requirements for adoption by customers. This may require additional testing, prototyping for manufacturability, durability and integrity, as well as further development to improve performance and other characteristics. Benchmarking tests are often required to demonstrate the product/service advantages and to position the product in the market.

Your role can vary depending on your interest and involvement, in the interest of the licensee in utilizing your services for various assignments, and any contractual obligations related to the license or any personal agreements.

Licenses typically include performance milestones that can result in termination of the license if the milestones are not met by the licensee. Termination frees the technology to be licensed to another corporate partner, which deems the technology commercializable.

NC A&T’s Office of Intellectual Property Development and Commercialization would like to thank and acknowledge the University of Michigan Office of Technology Transfer for providing the starting materials for this Q&A.