Licensing

As soon as your technology is accepted by UNL OTD for patenting and licensing, it is assigned to a case manager who serves as your primary contact on licensing and commercial issues. Your case manager is part of a larger team that will work together to patent and license your technology, including:

• Outside patent counsel
• OTD's support staff
• OTD's general counsel
• OTD's research and marketing specialists
• Other case managers

Legal counsel will help ensure that licensing agreements conform to applicable laws. OTD's research and marketing team will help your case manager with market analysis and preparation of marketing materials. OTD also has an experienced support staff and a computerized tracking system to make certain royalties are paid on time and other agreement obligations are met.

OTD also provides license agreement administration. Information on license agreements is entered into OTD's proprietary database system, including license fee and royalty details, payment dates, development plans and report timetables, and licensee and OTD obligations. If any anomalies occur, such as missed royalty payment dates, they are recognized, a report is generated and the assigned case manager reviews it. This system and the dedicated people who work with it help to ensure that OTD's licensing efforts are successful.

OTD fully recognizes the busy schedules that UNL researchers maintain. Once a patent application has been filed and patent office objections are dealt with, OTD can usually proceed with the licensing process with limited time involvement on your part. Experience has shown, however, that when the inventor is willing to expend a reasonable amount of thought and time in helping with licensing efforts, the licensing success rate is much higher than when the inventor is not available.

Evaluation of Potential Interest in the Technology

The first step in OTD's marketing approach is to contact qualified existing customers and licensees. This step can begin as soon as OTD files a patent application, or even earlier, if you and your case manager are able to identify a good licensee at the time you disclose the invention. In other situations, the technology may be so advanced that the market has not yet caught up with it. In that case, the best strategy may be to wait for a potential licensee who can fully understand the commercial value of the invention.

Your case manager will use one or more methods to find a licensee for your technology, depending on the particular technology involved. Possible methods include:

• Personal Contacts
  As an initial step, your case manager will personally discuss the technology with potential licensees.

• Direct Marketing
  OTD's direct mail program is sometimes used to supplement direct contacts, particularly when many smaller potential licensees can benefit from a processing method or other refinement.

• Technical Presentations
  Your own presentations and papers at scientific meetings can be important in licensing. Contacts made in connection with such presentations can be a good source of potential licensees. Please remember to send copies of these presentations to OTD, along with any commercial contacts you have made.

• Conferences and Trade Shows
  OTD participates in a number of conferences and trade shows each year that draw industry managers and directors of business development, as well as representatives from technology transfer offices across the country.

The License Negotiation

During the licensing process, it is important to keep your case manager aware of your activities with potential licensees. If potential licensees contact you directly, please inform your case manager. You should expect to answer a reasonable number of questions from potential licensees regarding your technology, but refer all commercial and contract matters to your case manager.

If the potential licensee begins to demand too much of your time or becomes too inquisitive about your current research activities, let your case manager know so he or she can gently remind the potential licensee that such demands or questions may be inappropriate. Under no circumstance should a potential licensee consider you an unpaid consultant to their organization.

Once the right licensee has been identified and makes a decision to obtain a license, your case manager will negotiate the details of an agreement with the interested company.

Things to Keep in Mind

In the end, many technologies patented by OTD are never licensed and many of those that are licensed never pay royalties exceeding their patent costs. Moreover, while some technologies are licensed within a relatively short time, others need more time to let the market catch up with the technology.

The University licenses the rights to its IP; it does not sell IP outright. The University retains various rights to use the licensed IP in research, with particular emphasis on retaining inventor rights even at a follow on institution.

This has been a brief overview of the way your OTD technology team works to license and administer your technology. Please remember that you are also an important member of the team. If you have any questions on licensing, give your case manager a call.