Licensing

The full impact of our innovations is in most cases only realized through partnership with a license that can develop and/or integrate the technology into a new product, treatment, service, process or tool.

The UILO will work with researchers and potential licensees to structure licensing agreements. License agreements, which transfer the right to use a technology to the receptor company without transferring ownership of the technology, are typical but in appropriate circumstances the ownership of the technology can be transferred through an assignment agreement. The intellectual property that is the subject of the license typically falls under one or more patents, but it can be a trade secret, trademark or, typically in the case of software, copyrighted material.

Different types of inventions lead to different licensing strategies: a basic scientific tool which could be used by everyone in the field is typically licensed on a non-exclusive basis; whereas an invention that requires extensive investment by the licensee to bring to market may be licensed exclusively. The UILO has developed a general license agreement that is modified as necessary for each invention and licensing situation. For instance, a small start-up company may not be able to afford initial large payments and may prefer an agreement that gives U of L an equity stake in the company and minimal payments until a product is on the market.

Because a license represents the beginning of a long-term relationship, the UILO strives to negotiate an agreement that satisfies all parties. A license agreement must reflect the complete understanding of the parties and set-out their rights and obligations. A license should use clear terms so that it can be interpreted by those who will be working under the conditions of the agreement, particularly since licenses often stay in effect for many years and the original negotiators may not be available to provide an interpretation.

There are numerous terms and conditions that may be used in a particular licensing situation. Some of the key provisions of a U of L license agreement include:

  • The scope, including exclusivity/non-exclusivity, field of use, and geographic range of the license
  • Royalties or other considerations
  • Performance requirements of the licensee
  • Registering the license with Personal Property Registry of Alberta
  • Confidentiality
  • The rights of faculty inventors regarding publication
  • Protecting U of L from liability
  • Insurance held by the licensee
  • Improvements to the subject of the license
  • Payment of taxes
  • Use of the U of L name