Accessing ISU Technologies for Commercialization

 

A question often asked by industry and economic development groups is:  "How do we access the university’s technologies?"  To access current technologies for commercialization, the links listed below will guide you to our technologies available for licensing, contacts within our office, and information about working with our office. ·        Technology Search ·        Technology Sign Up (notifies you of new technologies) ·        Staff Contact Information ·        What Industry can expect when working with OIPTT & ISURF ·        Inquire about other Technology Transfer Assistance

What Industry can expect when working with OIPTT & ISURF

 

Finding a Commercial Partner

 

The Licensing Associate assigned to a particular technology is responsible for finding those companies that will rapidly and effectively develop the technology into useful products and make them available to the public.  Many resources are used in this activity, including inventors, other university departments and centers, industry contacts, commercial databases and outside consultants.

 

Confidentiality, Material Transfer and Testing Agreements

 

To protect the patentability of our technologies, when patent applications have not been filed or patent claims are pending, confidentiality agreements are necessary before detailed information can be provided.  In many instances, however, considerable information is often available without the need for a confidentiality agreement.  When materials are available for testing, they can be transferred to industry under a material transfer agreement or a testing agreement, as appropriate.  In most cases, the materials can be transferred without charge.  If there are costs associated with the preparation and handling of the material, a fee may be charged for the transfer.

 

Licensing 

The Process
Once a company has reviewed information about the technology and has expressed continued interest, the next step will likely be a discussion and/or meeting with the inventors or authors.  OIPTT’s Licensing Associate can arrange and facilitate the meeting.  When the company wants to explore the possibility of licensing a technology, a face-to-face meeting between OIPTT and the company to discuss the objectives, needs and desires of each party is encouraged.

The Licensing Associate will work with the company’s counterpart to develop the terms of the license agreement. A successfully negotiated license agreement will assure that the technology will be diligently developed and marketed and will provide a financial reward to be shared with the inventors, the inventors’ college, and to further research and education.

Sometimes a company desires additional time to explore information about the technology and potential commercial opportunities, but also wishes to preserve its right to negotiate a license for a limited period of time.  In such a case, an option agreement may be appropriate and the Licensing Associate will negotiate the agreement with the company.

The License
A license is an agreement in which ISURF (the Licensor) grants to the company (the Licensee) permission to use an intellectual property (   ) right owned by ISURF under defined conditions.

Following is a description of our basic license terms for patentable technology:

DEGREE OF EXCLUSIVITY:  Exclusive or non-exclusive rights to use the technology in defined markets and/or territories may be granted to the company.  If the license is exclusive, only one license is granted in the defined markets and/or territories.  If it is non-exclusive, the same rights granted to the company may be granted to multiple companies.

FIELD OF USE:  The rights are restricted to a specific market application.

TERRITORY:  The rights are restricted to a geographic region or other defined territory.

SUBLICENSE:  An exclusive license typically provides the company with the right to non-exclusively license others i.e., others may also perform the defined rights granted under the license agreement with pass through of defined sublicense income to ISURF.  The sublicensee may not further sublicense.

LICENSE FEE:  There will be a fee upon signing the license.

DEVELOPMENT PLAN, DEVELOPMENT REPORTS, MILESTONES, and MINIMUM ROYALTIES:  Specific provisions are included in the license to ensure that the technology is being expeditiously developed and marketed for the public good.  A development plan is required with periodic development reports to update ISURF on the company’s progress. Performance milestones are established based on a reasonable development plan.  Minimum royalties are set based on such factors as the time products are expected to be in the market place and estimates of expected royalty income.

ROYALTIES and ROYALTY REPORTS:  A royalty rate based on the selling price of the products will be negotiated for the company’s and the company’s sublicensees’ transfer of products.  The company submits periodic royalty reports, along with the payment of royalties due, covering the company’s and sublicensees’ activity in product sales and transfers.

PATENT FEES and COSTS:  ISURF will own, prosecute and maintain all patents and patent applications included in the license.  In cases where the license is exclusive, and in a limited number of other cases, ISURF keeps the company informed on prosecution matters and seeks the company’s input on prosecution decisions.  However, ISURF must protect the broadest coverage for the invention and therefore, maintains control of the prosecution. In cases where the license is exclusive, the company will reimburse ISURF for all past and future patent prosecution and maintenance costs.

INFRINGEMENT:  If there is evidence of patent infringement, ISURF has the first option to take any necessary action, and if it does not after a determined period of time, the company, under an exclusive licensing arrangement only, will have the option to take action.

INDEMNIFICATION and WARRANTIES:  The company will indemnify ISURF and the university for any of the company’s or its sublicensees’ activities in the marketplace.  We request that product liability insurance be in place.  ISURF provides no warranty that the licensed intellectual property will be suitable for any markets or for any purpose, or that practice of the technology will not infringe third party intellectual property rights.

Research Funding 

During its review of the technology for licensing, a company may determine that it would like the inventor-researcher to continue further development within his/her university lab.  OIPTT will work with the researchers, the company, and the Office of Sponsored Programs Administration to arrange for research income to flow from the license (or option agreement) to the researchers’ lab.  All potential conflict of interest issues will need to be reviewed and addressed. Having a license or option agreement in place during the research period provides the company assurance that OIPTT will not grant rights to the background intellectual property to other parties during the term of the research.
 

Marketing

All technologies available for licensing are described in a marketing brief, which is posted at Technology Search on this web site.  The description is targeted to the industry for which the invention is intended, and provides a very brief description of the technology and its potential uses.  Anyone interested in obtaining additional information is invited to contact the individual responsible for marketing the technology or send us an email at licensing@iastate.edu.Sample Agreements to view the template form of these agreements.