Finding a Commercial Partner
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.
Once a company has reviewed information about the technology and has expressed continued interest, the next step is typically a discussion and/or meeting with the inventors or authors. OIPTT’s Commercialization Manager arranges and facilitates the meeting. When the company wants to explore the possibility of licensing a technology, OIPTT prefers to have a face-to-face meeting with the company to discuss the objectives, needs and desires of each party.
The Commercialization Manager works with the company’s counterpart to develop the terms of the license agreement. A successfully negotiated license agreement assures that the technology will be diligently developed and marketed and will provide a financial reward to be shared between 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 and thus wishes to preserve its right to negotiate a license for a limited period of time. In this case, an option agreement may be appropriate and the Commercialization Manager negotiates the agreement with the company.
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. The agreement will include some basic license terms.
Enabling Developmental Research
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 (OSPA) 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.
Information about all Iowa State technologies and germplasm that are available for licensing can be found by checking the Available to License section. Anyone interested in obtaining additional information is invited to contact the individual responsible for marketing the technology or to send us an e-mail to email@example.com.