Pappas IP will assist in structuring the appropriate licensing agreement per case. A licence is an agreement involving the transfer of rights from one party (“the licensor”) to the other (“the licensee”). These rights commonly control the use (for copying, manufacture, sale etc.) of an IPR (a patent, copyright material, confidential knowhow etc.).
A license deal may include a lump sum payment for the right to exploit the invention (either exclusively or non exclusively), usually in a particular market or for a particular purpose (referred to as the “field”), plus a royalty on the licensee’s sales. The deal may also include a research contract with the University, plus a consultancy arrangement under which the inventor gives the company assistance in setting up work in its own laboratories.
There are certain terms of a licence which affect you directly: confidentiality, improvements, and publication. Please discuss these issues with your PAPPAS IP Project Manager.
Confidentiality: the terms of the licence agreement (and occasionally its existence) and information about the licensee’s development and commercial plans and activities are confidential to protect the University’s and the company’s interests.
Improvements: licensees expect access to improvements in the technology so they can sell more, better products and to protect against your future ideas going to a competitor. The risk is the creation of a ‘pipeline’ through which your future ideas are pre-sold to a single company, who may in future become an unsuitable commercial partner. PAPPAS IP limits the definition of ‘improvements’ to ideas by named individuals, within two years, within the scope of the licensed technology.
Publication: companies sometimes insist on the right to review papers before they are submitted for publication; PAPPAS IP limits any delay to up to 3 months.
PAPPAS IP Innovation has a strong portfolio of software technologies which are licenced to commercial organisations on an exclusive or non-exclusive basis. Researchers who wish to obtain clearance to publish and share their software though open source licensing should contact Research Services or click here for more information.