Marketing & Licensing
For inventions to reach the marketplace for the benefit of society, the cooperation of industry is necessary. A patent license allowing a company to use the invention formally establishes this cooperation. Through licensing, the University retains ownership of a technology, and the companies obtain the right to use the technology to make and sell products or services.
The Innovation Partnership Services Office takes a direct approach in finding a potential commercialization partner for a specific technology. Non-confidential information (also called an executive summary) about the technology is submitted to the potential sponsor. Confidential information is then provided to interested parties after they have signed a confidentiality agreement. This information may include patent applications, research proposals, and other relevant research data. The researchers can make a valuable contribution to the search of potential licensees because they are probably familiar with potential markets for the invention. If a potential commercialization partner demonstrates interest in a technology as a result of reviewing the confidential information, a license agreement is negotiated.
Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention which requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development.
Inventions made by UNCG faculty or staff in the course of their employment, using University time, facilities, or funds, are considered the property of the institution. If you’re not sure whether your invention should become the property of the University, clarify your rights by checking with the director of the Innovation Partnership Services Office. Because licensing technologies provide a financial benefit to licensees, the University shares in that benefit in the form of license issue fees, minimum royalties, and/or running royalties.
The revenues that the University receives from a patent or invention will be applied first to reimburse the University for any incremental expenses incurred by it in obtaining and maintaining patents and/or in marketing, licensing, and defending patents or licensable inventions. After provision for such expenses, the inventor’s share of such revenues received by the University shall normally be as follows:
However, the Chancellor may negotiate a different revenue sharing arrangement if the Chancellor deems it to be in the best interests of the University. In the case of co-inventors, each such percentage share shall be subdivided equally among them unless the University in its sole discretion determines a different share to be appropriate. Applicable laws, regulations, or provisions of grants or contracts may, however, require that a lesser share be paid to the inventor. In no event shall the share payable to the inventor or inventors in the aggregate by the University be less than 15% of gross royalties received by the University.