Some licensing terms and definitions you may come across in the process are listed below.
Licence Agreements: A license agreement gives you rights to develop a University technology towards commercialisation.
Material Transfer Agreement (MTA): MTA’s let you transfer a copy or version of a universities’ material to your lab for further evaluation and development.
Non-Disclosure Agreement (NDA): After you contact a University technology department, they may draft an NDA. This document keeps confidential information, such as unpublished patent applications and unpublished scientific data, between the parties that share it. Non-confidential information, such as published patents, published research articles, and marketing summaries, does not need an NDA.
Term Sheet: A term sheet is a nonbinding document that captures the business terms of your agreement with the University around technology.
Licence Agreement Definitions
Some terms commonly included in license agreements include:
License fee: Paid once you sign a license agreement, with the amount based on the technology’s value.
Patent reimbursement: Paid to the University to defray the university’s patent processing costs, such as filing fees, intellectual property attorney’s fees, and any late fees.
Development period with milestone payments: When a technology requires extensive development, you must submit a development plan that outlines your plan toward commercialisation. The University will then check-in with you on your progress and, in many cases, ask for milestone payments to reduce the initial license fee on a high-risk project.
Royalties: Paid when you sell products based on the technology, either as a percentage of sales or a fee per unit.
Minimum royalty: This is inserted to encourage you to market your technology actively. The university will expect an annual minimum royalty at the end of each development period and may require an extra fee if your royalties fall short of this minimum.
