University of Minnesota
Office for Technology Commercialization
http://www.research.umn.edu/techcomm
612-624-0550

Office for Technology Commercialization homeOTC

For Industry

Licensing Process

We have a proactive approach, but we need to hear from you to understand your goals!

Our licensees generally follow the process outlined below when acquiring new technologies. As most of our inventions are very early stage, you’ll need a strong commitment to the development and productization phases of commercialization. We understand the risks and rewards associated with new product development, and we’ll help identify those risks with you up-front. We partner with licensees committed to the ultimate goal, to create the greatest value for their customers, the public, and the world.

What You'll Find in Our License Agreements

A license agreement gives you rights to use a technology for further development towards commercialization. License agreements typically include the following elements:

License Fee

License fees are paid once the license agreement is signed. The amount depends on the value of the technology.

Patent Reimbursement

Patent reimbursement fees are paid by you to the University in order to defray patent processing costs. Domestic and foreign patent filing fees, intellectual property attorney’s fees, and any late fees are all captured by the patent reimbursement fee.

Development Period with Milestone Payments

When a technology requires extensive development, our license agreements will provide for a development period. This means you’ll be asked to submit a development plan that outlines the work you plan to do during the development period. Thereafter, we’ll check-in with you to confirm progress towards the milestones in your plan, a requirement for technologies born out of federally funded research. Frequently, those milestones will specify milestone payments. Milestone payments help reduce initial license fees on high-risk projects since these milestone payments are made only when the milestones are achieved.

Royalties

Royalties are paid when products that use the technology are sold. Royalties may be calculated on a percentage-of-sales or fee-per-unit basis, depending on the standard in that market.

Minimum Royalty

At the end of any internal or external development periods, we will expect an annual minimum royalty. Any royalties actually earned will be credit toward the minimum royalty, so the minimum royalty is normally not an additional fee. Minimums encourage active marketing of each technology.

The Technology Marketing Manager assigned to each technology has significant experience in licensing and in industry, which helps to streamline the process and reduce time to execution. The following list outlines and defines the six steps in our technology licensing and commercialization process. For definitions of specific terms, or to view license agreement templates, please view the License Agreement Definitions and Documents section.

The Six Steps to Licensing and Commercialization

Tip! Click on the steps to open/close the topic.

1. You Identify and Assess a Technology

You may identify a potential technology through a personal relationship with an inventor or a licensing professional or through searching our online portfolio through our Technology Marketing Site. The online portfolio is organized by scientific category and all are currently available for licensing.

* For technologies that have an online license option available, you may proceed to acquire a full license of the technology online, directly from the Technology Marketing Site.

2. Request Additional Information and Sign CDA

Once a technology has been identified, you should contact the Technology Marketing Manager who will provide additional information to help evaluate the ’fit’. We will provide non-confidential information as it becomes available, or in many cases, we will execute a Confidential Disclosure Agreement in order to provide you with the most information we can. In certain cases, we may also introduce you to the inventor directly for additional technical and scientific details. At this point, if further research is required, we may propose a Materials Transfer Agreement (MTA) through our contracts team.

Learn more about agreements.

3. You Submit a License Application

Should you decide to pursue a technology license from the University you will be asked to complete a License Application which will facilitate our contracting process and will reconfirm the goals that may have already been stated during discussions. This application also gives us the information we need to assess applicability to your intended use, document your timeline, and allow us to draft an initial Term Sheet. The License Application includes questions regarding:

How the technology will align with your current priorities?

How you will support the development into a market-ready product?

How you plan to bring the new product to market?

What are the development timelines, milestones, and revenue projections?

What market and industry research has been conducted?

Which risks are involved in technology development?

Which License Agreement type will be required?

  • Option Agreement
  • Exclusive Patent License
  • Non-Exclusive Patent License
  • Exclusive Copyright License
  • Non-Exclusive Copyright License
  • Plant Variety License

Learn more about agreements.

4. We Draft a Term Sheet

After discussions and a licensing application submittal, we’ll draft an initial Term Sheet. This will be our basis for a signable license. Exclusivity, field of use, grant of rights, and sublicensing provisions may all be used as mechanisms used to shape the relationship. Royalties, license issue fees, minimums, milestone payments, and other terms are tailored to match each technology opportunity.

5. We Produce, Negotiate, and Sign a License Agreement

Through the business terms outlined by the Term Sheet, and legal terms required by the University for each technology, we’ll draft a license agreement. We’ll typically have one or more reviews for legal and business term continuity. Once we come to agreement on the final language, we’ll execute the agreement.

6. You Develop, Market, and Sell!

A signed License Agreement enables you to productize. We’ll check-in with you as you progress, as many agreements include some type of milestones. At this point, we’re interested and invested in your success. We want to assure the technology performs well in your environment, and our relationship with you is mutually beneficial as we observe your commercialization efforts.

 

Research Highlight

Piglet

PRRS Vaccine

Porcine Reproductive and Respiratory Syndrome (PRRS) is considered the most economically important viral disease of intensive swine farms in Europe and North America. The syndrome first began causing swine herd problems in the late 1980s, but wasn't isolated until the early 1990s. Acute outbreaks of PRRS within a swine herd can cause dramatic symptoms. Veterinary practitioners also report a greater incidence of secondary pathogenic diseases among PRRS-infected nursery pigs including Salmonella cholerasuis, Haemophilus parasuis, Streptococcous suis, Mycoplasmahyo pneumonia and swine influenza virus.

The PRRS vaccine developed at the University of Minnesota is a modified live virus that, when used with other herd-management strategies to control PRRS, prevents spread of the disease. The result is healthier herds, larger litter sizes and safer food products.

 

Story from the AUTM Better World Report http://www.betterworldproject.org/