Overview of Standard/Popular Licenses
Choosing an Appropriate License
License Differentiator – Interactive License Selection Tool
Tabular Comparison of License Terms
Software Licenses in Plain English
Experience indicates that there is no uniform approach that will meet the needs of our diverse industry partners. The University is committed to working with its partners to provide leases for incubation space, contact terms and IP rights necessary to meet company goals. Faculty working with industry partners should contact the Technology Commercialization Services (TCS) about specific requests; our policies provide an ability to offer industry research partners options that serve their unique needs.
Licensing Policies
Royalty Sharing Policy
The University of Connecticut policy provides that our faculty inventors share in revenue generated by their discoveries as follows:
If a faculty member is no longer at UConn, the portion of the revenue that would have gone to the inventor’s research program (50% of the 33 1/3%) will be shared equally between the appropriate dean and the university.
License Back Policy
If the University does not believe that it can successfully commercialize a University Invention, and if the faculty member is not interested in founding a Startup, the University will offer the inventor a license of the University Invention (such license referred to as a “license back”). In addition, the inventor may request a license back from OVPR at any time. OVPR is not required to grant a license back but will respond to any request within three months. If the University elects to license back the University Invention to the inventor, the inventor, as licensee, will assume obligations related to patent expenses and commercialization and will agree to pay a portion of the gross revenue that the inventor receives through his or her commercialization efforts. In addition, the inventor will not be entitled to the net revenue payments described in Section 3 of this policy.
As stated in the UConn IP and Commercialization Policy
Other Policies
Guidelines for Faculty, Staff, and Students who are affiliated with a company: Guidelines for FACs and SBIR-STTR
Student Employment: https://policy.uconn.edu/2011/06/02/use-of-students-in-outside-employment/
Faculty Consulting: https://consulting.uconn.edu/
Financial Conflict of Interest: https://research.uconn.edu/fcoi-home/
CT Code of Ethics: https://policy.uconn.edu/2011/05/24/guide-to-the-state-code-of-ethics/
UConn Code of Conduct: https://policy.uconn.edu/2011/05/17/employee-code-of-conduct/
Intellectual Property and Commercialization: https://policy.uconn.edu/2015/10/08/intellectual-property-and-commercialization-policy/
A startup is a new business entity formed to commercialize one or more related intellectual properties. Forming a startup business is an alternative to licensing the IP to an established business. There are several factors you should consider to determine if a startup is viable path. Examples include:
TCS Venture Development can help to determine if a startup company is viable, and will advise on other key issues relating to starting a company. The choice to establish a new company for commercializing intellectual property is a joint decision made by TCS and the inventors. If a new business startup is chosen as the preferred commercialization path, TCS can assist you and the other founders in meeting investors, consultants and entrepreneurs and accessing other resources at UConn to advise you in founding the company. It is advisable for inventors to have agreements regarding their roles with the startup reviewed by their own counsel to ensure that all personal ramifications – including taxation and liabilities – are clearly understood.
The general process for the selection of potential technologies for a university startup includes a review of inventions based on criteria such as:
TCS Assistance:
For additional resources to help you start your business, see our Startup Guidebook.
Once a faculty discovery has been patented, that’s not the end of the line! The next step is to find an industry partner who would like to license the technology.
Marketing a technology:
TCS uses many sources and strategies to identify potential licensees and market inventions. Sometimes existing relationships of the inventors, TCS and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complimentary technologies and agreements to assist our efforts. Faculty publications and presentations are often excellent marketing tools as well.
Licensees can be identified in many ways. First, the inventors are often aware of the commercial companies who would be interested in the work. Industry-specific marketing efforts, including trade show participation, affiliations and market research carried out by TCS, also seek to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature; often these can prove to be potential licensees.
How you can help:
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and TCS Licensing Director work together as a team to market and promote use of the technology.
Working with industry:
Marketing technology to a potential licensee will usually require that a Confidentiality Agreement be established. The OVPR can negotiate these agreements for you and has the legal authority from the University to do so. Confidentiality Agreements, named Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs), are agreements between UConn and an outside entity (company, person). These are used to facilitate discussions of information that the parties wish to keep out of the public view. For companies, sharing of their business needs can lead to developing solutions with UConn personnel; however, they may not want such needs to be known to their competitors. For UConn, maintaining confidentiality can preserve patent rights to inventions. Many university offices and the programs of OVPR can provide NDAs/CDAs and can ensure proper agreements are put in place.
Once their evaluation is completed, the potential partner may want to discuss the terms of a license. TCS will negotiate the terms of the license with input from the inventor regarding valuation, and other obligations, that occur in such legally binding agreements. Other terms that are included in a license include exclusivity versus non-exclusivity, world-wide rights versus rights in only some territories, all fields of use versus restricted fields of use, and many other considerations. On occasion, we will sign an option agreement, which gives a company the right to evaluate the technology for a limited time prior to making a decision about licensing (usually 6 months – 1 year). The TCS is experienced in negotiating contracts and is the designated legal authority from the University to do so. If a potential partner asks what kinds of terms the University would want in a license, please refer them to TCS.
Agreement Management:
TCS tracks the progress of the licensee towards milestones and goals established in the signed agreement. Licenses usually state that technology progress reports must be submitted regularly until a product hits the market. Some companies will fund research and development of the technology at UConn in the inventor’s lab. Others may offer a consulting position to the inventor as they develop a product at the licensee’s facilities. TCS usually continues to manage the patents, if there are any, and will sometimes need to handle patent interferences, patent infringement or deal with arbitration or litigation surrounding a technology or a license. Once a product is offered for sale, then TCS requires quarterly reports and royalty payments from the licensee, although specific terms vary from license to license. Payouts are made according to the royalty sharing policy after UConn has recouped its out-of-pocket expenses, primarily the cost of obtaining patent protection.
License Back Policy:
If TCS decides not to pursue a patent on a technology, the inventors have the option to license back the technology. The license back is a legal agreement that enables the Inventor(s) to patent and commercialize technology developed at the University.
Royalty Sharing Policy:
Inventor contribution percentages refer to the share of net royalty income that is split amongst the inventors; the standard disposition is equal sharing. However, it is up to the inventors to propose and agree on a different formula and communicate that agreement to TCS. This is accomplished by filling out the back of the Invention Disclosure Form. Invention-related income is allocated based on the university’s Royalty Sharing Policy.
If you have any questions please contact us!
As researchers uncover new knowledge, often times they develop novel techniques or demonstrate new and valuable applications of their results. New ideas that can be applied in useful ways can be considered new inventions, and inventions are intellectual property (IP) that can be considered for patent protection. IP includes inventions and other creative works and/or materials that may be protected under the patent, trademark and/or copyright laws.
Understanding and being mindful of intellectual property is so crucial in a research environment because:
There is a logical order to ideas as they take shape, coalesce into inventions and move forward to commercialization. TCS guides this process and is often the first stop for inventors and industries seeking to advance new ideas and products. TCS manages all intellectual property created at the university.
TCS will assess the invention for its commercial potential by evaluating its technical strength, market potential, patentability and strength as if issued as a patent. We will also take into consideration whether a prototype exists or proof of principle experiments are complete, as well as whether a potential commercial partner has already been identified or has expressed interest. If the invention is considered to be a reasonable risk, a patent application will be filed.
Patenting is a legal and technical process, which is overseen by TCS, but which very much involves the inventor(s) and the University’s outside patent attorneys. Specifically, the inventor(s) may be asked by the attorney to: clarify details of their invention, describe all its possible uses, differentiate the invention from related technology and describe its potential advantages, and help define what each potential inventor contributed to the creation of the invention. The inventor(s) will also be asked to review patent applications and to help respond to questions raised by the Patent Office. To be granted a patent, an invention must be novel, non-obvious, and useful.
Faculty Invention Ownership
UConn owns all inventions made by its employees while working under a grant or contract to UConn, or while using UConn resources.
U.S. patent law specifies that all inventions are owned by the inventor(s) unless the inventor(s) has transferred ownership or title to another entity. This applies to UConn. Under Connecticut law (C.G.S., Sec. 10a-110b), UConn has the right to own title to any invention conceived by university employees (including but not limited to full-time and part-time faculty, post-doctoral fellows, student employees, research assistants, visiting scientists and emeritus professors) in the performance of customary or assigned duties or which emerges from any research or other program of the university, or which is conceived or developed wholly, or partly, with the use of university funds, facilities, equipment or materials.
That is, by virtue of employment, employees of UConn are required to assign their right, title and interest in inventions to the university. Click here to review an invention ownership flowchart.
Student Contribution to an Invention
A student can even be the sole contributor or inventor. The policy for ownership of an invention developed with or by a student is the same as for any other member of UConn in circumstances where a student is participating in sponsored research at the university and the research contract addresses ownership. Procedurally, a student who believes he or she should have clear title to an invention, which is developed at the university, should contact TCS. Upon disclosure of the invention and examination of the details surrounding its development, the university may execute a waiver of rights regarding the invention to the student, or ask the student to assign his or her rights to UConn.
An invention is “the discovery or creation of a new material (either a new manufactured product or a new composition of matter), a new process, a new use for an existing material or any improvements of any of these.” Computer software may also be classified as an “invention.”
All researchers are required to disclose to UConn all intellectual property that could constitute inventions or copyrighted works. This is especially important where any portion of the funding comes from the federal government, private foundation or commercial sponsor. Federal law requires prompt disclosure for federally funded inventions. If not, UConn, inventors and involved companies could lose very significant rights if disclosures are not promptly made.
You have an invention. Now what?
The Invention Disclosure Form must be completed as described in the following steps:
*In all cases a hard copy of the original signature page must be submitted.
If you have any questions please contact us!
Gregory Gallo, Director, Technology Transfer
Donna Cyr, Director of Licensing, Physical Sciences & Engineering
Lindsay Sanford, Director of Licensing, Engineering
or call us at 860-679-3992
Our job is to help your commercialize your technology. The easiest way to get started is to contact us so we can better understand what you are working on. We encourage you to contact us during your early research activities to be aware of the options that will best leverage the commercial potential of your research.
The staff is trained to assist you with questions related to marketability, funding sources, commercial partners, patenting and other protection methods, new business startup considerations, university policies and procedures and much more. Our team approach provides you with access to specialized support such as a new business development specialist.
The typical steps in the commercialization process include:
Research
The commercialization process begins when a discovery emerges from research. We offer assistance both prior to and after the research discovery.
Invention Disclosure
Submitting an Invention Disclosure to TCS is the first step to formally document your invention with our office. This is a confidential document which fully details your invention so that we can evaluate options for commercialization.
Assessment
TCS will assess your invention for its commercial potential by evaluating its technical strength, market potential, and patentability. We will also consider whether a prototype exists or proof of principle experiments are complete, as well as whether a potential commercial partner has already been identified or has expressed interest.
Protection
We want to protect the rights of those who create IP. Based on a thorough assessment, we will determine if patent protection is possible and appropriate. If we believe your invention has commercial potential, we will file a patent application with the U.S. Patent Office.
Marketing
TCS will work with you to determine whether to try to license the invention to an existing company or help start a new venture to commercialize the technology. If we seek a licensing partner, TCS will work with you to identify and contact potential commercial partners and market the technology.
Licensing
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a startup company is a better option. Once a licensee has been identified, TCS will negotiate any necessary agreements with third parties.
Commercialization
The licensee continues the advancement of the technology and often makes business investments to further develop the product or service. This could include further development, obtaining regulatory approvals, additional sales and marketing support, training, or other activities.
Reinvestment
Licensing revenues received by UConn are distributed to inventors as well as their academic units. These revenues fund additional research and education and encourage further participation in the technology commercialization process.
The mission of TCS is to expedite and facilitate the transformation of UConn discoveries into products and services that benefit patients, industry and society.
TCS and its network collaborate to support technology transfer and venture development based on student and faculty innovation. We provide services for entrepreneurial training, intellectual property protection, technology licensing, mentorship, business startup, and connections to the investment community. UConn’s Technology Incubation Program, the University’s business incubator, is part of TCS.
Working throughout UConn’s 14 schools and colleges, and participating in the state’s ecosystem, TCS is a focal point for the University’s innovation-based activities, particularly for faculty and external entrepreneurs and companies seeking technology partnerships at UConn. TCS can provide access to university-wide programs supporting innovation and entrepreneurship.