Licensing
Terms
Our goals in negotiating licenses are to transfer technology,
to create a reasonable return on the public's investment, and to create
incentives to recruit and retain the best faculty. It is important to
note that in negotiating terms, we will remain flexible so that the license
agreement can be created to best suit the licensee, the technology and
the marketplace.
Field of Use
The field of use in the license grant should support the goal of transferring
new technologies to the fullest extent possible. It should, therefore,
be appropriate to the technology and to the licensee.
Up Front License Fee
The upfront fee is essentially "earnest money". It should be
set at a level that will provide an incentive to the licensee to create
commercial pathways for the technology, thereby increasing its chances
of reaching the public.
Exclusivity
Technologies can be licensed on an exclusive or non-exclusive basis, depending
on which is appropriate in the given instance. Normally, exclusive licenses
will carry with them greater fees and royalties and will require a higher
degree of diligence on the part of the licensee.
Patent Costs
Where the licensee has been granted an exclusive license, GMIP will expect
that the licensee will reimburse GMIP for all past patent costs and will
assume all future patent costs.
Diligence Milestones
Examples of diligence milestones might include events such as the patent
issuance, a prototype being made available, the first commercial sale,
or annual/quarterly sales targets.
Milestone Payments
Diligence milestones can trigger an additional payment due, particularly
when the milestone is an event which adds value to the technology (as
when the patent issues). Milestone payments may also become due if diligence
milestones are not met.
Revenue from Commercialization
There are many issues which we will consider in determining the amount
and kind of revenue stream in the license agreement, including the extent
of the granted license, the market place, the maturity of the technology,
etc. Typical kinds of revenues might include license fees, running royalties,
or an equity position.
Sublicensing
The license agreement will detail sublicensing rights and the fees and/or
royalty rates associated with those rights.
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