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The owner of patent often looks for others to commercialize their technology.  Since faculty and staff inventors are rarely also manufacturers, our office will seek appropriate manufacturers and permit them to market a technology in exchange for compensation.  This is usually done with a document called a "license".

  A license is an agreement between two parties whereby one party is granted by the other the right to make a limited and special use of the second party's property.  Usually that licensable property of the invention is in the form of a Patent (Design, Utility or Plant), a trademark, a copyright, and a trade secret or even know how.  It is essential that a license agreement be written and signed by the inventor or owner of the patent and the manufacturer. 


There are two facts that are important with regard to seeking licensing partners.   First, the potential financial return from licensing or selling is much less than if one were to manufacture and sell a finished product developed from the technology. When a technology is licensed, a company is agreeing to take on the financial risk of getting a product to the marketplace. They will reap the bigger benefit from the sales of the product.  Secondly, it is often difficult to find a commercialization partner  interested in university technologies. For many reasons, companies prefer to develop products in-house through their own research and development departments, and may be reluctant to work with an "outsider."


Licensing Agreements


There are rules of thumb, but no set terms for agreements between inventors and companies. Each agreement must be negotiated individually to satisfy the unique circumstances of each case. Two types of agreements are commonly used: sales agreements and licensing agreements. Each is described below:

Sales Agreement. In this type of agreement, the company pays a lump sum for your idea and anything else that may be of value to the company (prototypes, descriptions, documentation, trademarks, etc.). The amount of payment is an estimate of market potential. A rule of thumb is the cost of inventing divided by the cost of commercialization, usually about a 1:10 ratio. Therefore, you may receive about 10% of the total expected profit to be made from the product. Often, the inventor will get less than 10% because there is no guarantee there will be any profit, and in this situation it is the company taking the risk.

Licensing Agreement. This is the more common type of agreement. It is usually preferred by both parties because the payoff is based on actual sales rather than expected profit. Again, terms of licensing agreements are highly variable, but they usually include royalty, up front payment or fees, due diligence, exclusivity clause and a term.  For further information on these terms click on the links below:

Royalties
Up Front Payment
Due Diligence or Guarantee
Exclusivity Clauses
Term of Agreement
 

A potential licensee may offer its own license agreement terms or RSP can begin the negotiation with a boilerplate agreement that is then modified to suit the particular case at hand.

 

For further information contact:

Elana Wang, J.D.
Director, Office of Technology Transfer
3640 Colonel Glenn Highway, 306 University Hall
Dayton  OH  45435

Phone 937.775.4245
Fax 937-775-3781
elana.wang@wright.edu