Licensing Process

Licenses are crafted on a case-by-case basis and to meet the specific needs/circumstances at hand. As such, we encourage inventors and faculty, whether interested in forming a startup around the technology or licensing to a third party, to engage with TCS as early as possible.

The graphic below outlines the general Licensing Agreement Process. TCS will be the primary point of contact throughout this process, to help facilitate and complete negotiations. Our goal is to make this process as streamlined and transparent as possible while ensuring that the final agreement is structured to meet the needs and goals of all parties.

licensing process

 

Working with Industry

As a research university, UConn offers distinct value to industry. By partnering with industry experts, entrepreneurs, investors, and public and private entities around the world, UConn is committed to supporting projects that benefit our state, nation, and the global community.

We are committed to working with our faculty and industry partners to identify approaches that best meet their goals and needs, whether that be in the form of technology licensing, sponsored research, or fee-for-service work. We provide flexible and responsive experiences to our company partners, including crafting agreements that are supportive of meeting their short and long-term business goals. Our perspective is that the success of our partners is ultimately our success as well. We work diligently to support their efforts at every step along the way.

 

 

 

Option Agreements

For additional flexibility, industry partners can also gain rights to your IP without first taking a license through an Option Agreement. Option Agreements are entered into with third parties wishing to evaluate the technology prior to entering into a full license agreement. Option clauses within research agreements describe the conditions under which UConn preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in SRAs to corporate research sponsors.

Licensing Agreements

A license grants permission by the owner or controller of intellectual property to another party, under a formal agreement, for use of the intellectual property. License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at UConn. University 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 return to UConn. Licenses can be exclusive (only one company/group can make use of the technology during the license period) or non-exclusive (technology can be licensed to others without restriction).

Sharing Ideas and Materials

It’s important to ensure that the appropriate agreement(s) are in place prior to sharing new ideas/inventions with industry or other inventors outside of UConn. Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs) are used to protect the confidentiality of an invention during evaluation by potential licensees. UConn enters into CDAs/NDAs for university proprietary information shared with someone outside of UConn. CDAs/NDAs also protect proprietary information of third parties that UConn researchers need to review in order to conduct research or to evaluate research opportunities. CDAs/NDAs can be prepared or reviewed and signed by Sponsored Programs Services (SPS) or TCS.

Similarly, a Material Transfer Agreement (MTA) should be in place prior to sending/receiving materials to/from industry and other inventors outside of UConn. An MTA must be executed in each case.

 

For materials going out of UConn/UConn Health: Ana Fidantsef, PhD.

For materials coming into UConn: spscontracts@uconn.edu

For materials coming into UConn Health: sps@uchc.edu

Sponsored Research

A university/industry research collaboration is formalized by a Sponsored Research Agreement (SRA). The sponsor and faculty member agree on the specifics of the work and a tentative budget. The final budget and all other aspects of the final contract are negotiated via the Sponsored Program Services (SPS) on the Storrs campus or the Office of Research and Sponsored Programs (ORSP) at the Health Center. The contract addresses a variety of issues including amount of funding, scope of work, IP rights, governing law, etc.  It’s important to keep TCS informed of upcoming publications or interactions with companies related to your intellectual property.

Click here  for more information regarding the Sponsored Research Process and Guiding Principles and Practices.

Fee-for-Service

Contracts may be accepted from a company to provide non-research services.  Fee for Services Agreements (FSAs) are used in those cases where UConn may perform service-for-a-fee, which is essentially running previously developed tests on a sponsor’s materials, if such work is consistent with a department’s academic mission, and if UConn is uniquely qualified and positioned to do so. Such work is not research, and fee funds cannot be used to conduct research. The material and data provided, as well as those generated, may be proprietary to the sponsor. A pre-agreed Statement of Work is required, and to avoid problems, the Principle Investigator (PI) should not vary from it or any other relevant agreed upon conditions. FSAs are negotiated by the SPS, or the purchasing department of the Health Center.

Senior Design

Faculty members may also oversee School of Engineering Senior Design projects conducted in collaboration with company and federal government agency partners. More information on Senior Design may be found here.

Finding the Right Fit

A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes the focus and intensity of a startup company is the best choice. In other cases, an established company with experience in similar technologies and markets is the better option.

Just as each invention or technology is unique, so are the associated industry partnerships and collaborations. We recognize and value the exceptional nature of each and every relationship and work to provide a tailored approach that aims to deliver the best possible outcomes and successes.

 

Next Steps

Faculty working with industry partners should contact TCS about specific requests; our policies provide an ability to offer industry research partners options that serve their particular needs.

Our template term sheets, and option/license agreements are straightforward and contain typical terms and components. However, we view these templates as starting points for further discussion, and are willing and open to tailoring based on specific circumstances/needs that arise through the course of the negotiation.

 

Contact

Gregory Gallo, PhD

Director of Technology Transfer
860.679.8774
gregory.gallo@uconn.edu