The Office for Technology Transfer can assist you in identifying and licensing technology developed at The University of Alabama. UA chooses its licensees based on their ability to commercialize the technology for the benefit of the general public, while providing fair returns to the University for continuing research and education.
Transferring technology is a person-to-person transaction, and it is our goal to form a long-term, productive relationship with our partners. The University of Alabama has an experienced licensing staff. Our licensing staff are active members of the Association of University Technology Managers (AUTM) the international organization of technology transfer professionals and the Licensing Executives Society (LES).
Finding a Technology
To find solutions for your business and technology needs, please search our available technologies. We also encourage you to contact us as we can be your guide to a wide range of technology solutions and the researchers behind them. Each posted technology has the contact information for the OTT Licensing Representative who can assist you.
UA’s Licensing Process
The licensing process is designed to negotiate and formalize a fair exchange of access to technology and legal rights for reasonable consideration, while simultaneously accommodating the unique needs of both parties. Technology development today takes place in a complex environment, with competing requirements from the funding agencies sponsoring the research, federal and state law, university policies, the professional goals of the inventors, and the specific needs of the potential licensee.
Upon your company’s initial contact with the licensing representative, we can provide links to or copies of the publicly available materials describing the invention for your preliminary review. If you believe that the technology might pose a solution to your company’s needs, then we move to put your company’s technical experts in contact with our inventors to confirm the many specific details surrounding the implementation of the invention in the corporate environment. Often we will ask for your company to sign a Non-Disclosure Agreement (NDA) to protect any of the University’s proprietary information that may either reside in a still-pending patent application or may not be contained in the patent papers. These NDAs are completed by our licensing representatives and reviewed by UA’s Office of Counsel, usually on the same day. We have a sample NDA agreement posted here to speed the process. With an NDA in place, the technical teams can meet and discuss the technology.
Sometimes even after these technical discussions, uncertainties remain about the technology (will it scale up to industrial production levels? Can it interface with existing company tooling? Can the company’s staff reproduce the inventor’s work?) and a brief period of further testing or evaluation may be desired. We offer Option Agreements to reserve to the company the exclusive right to obtain a license agreement. If these Options are to last for more than a short time (3 – 6 months) we include developmental milestones to be completed by the company before it may exercise the option to obtain a license. Financial consideration for holding this exclusive Option can include the reimbursement of the University’s patent costs incurred during the Option Period, as well as an Option Fee.
In some cases, no further testing is necessary and the negotiation of an exclusive (or nonexclusive) License Agreement can begin. For those companies who have completed licensing transactions with other major research universities, you will find few surprises in our agreements. For companies who are doing such deals for the first time, we ask that you read the following section called Points to Consider When Negotiating a License.
Just as every technology is different, so too is every deal – we usually start with a term sheet covering definitions, diligence, and financial terms, but we are ready to discuss adjusting any of the terms that we are empowered to change. These changes would reflect the unique needs of both parties and the economic and practical realities that define the market opportunity being addressed. As such, we can’t promise that terms in any two license deals will be equal, but they will be fair for that situation. To assist you in understanding our standard Option and License Agreements, go to License Agreement Terms.
Points to Consider When Negotiating a License
Many universities have endorsed the Association of University Technology Manager’s (AUTM) list of nine points to consider as companies license inventions from a university. These points include:
- Universities should reserve the right to practice licensed inventions and to allow other non-profit and governmental organizations to do so
- Exclusive licenses should be structured in a manner that encourages technology development and use
- Strive to minimize the licensing of “future improvements”
- Universities should anticipate and help to manage technology transfer related conflicts of interest
- Ensure broad access to research tools
- Enforcement action should be carefully considered
- Be mindful of export regulations
- Be mindful of the implications of working with patent aggregators
- Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world
Find the complete Nine Points to Consider in Licensing University Technology document here.
What Do We Look for in a Licensee
The decision to license to a prospective licensee is shared by OTT staff and the inventor(s), whose proactive cooperation is often essential for success. We look for:
- knowledge and access to the addressed applications and markets
- financial and other resources
- a plan and demonstrated commitment to have our technology reach the marketplace
Are You Interested in Continuing the Research at UA?
The evaluation and technical development of an invention may require additional research. You may wish to fund research (sponsored research) to assist your efforts. The Office for Sponsored Programs negotiates these agreements with input from OTT personnel as necessary.
Negotiating Financial Terms and Equity
The University obtains financial compensation through: license fees, royalties, milestone payments, minimum royalties, and, in some cases, equity. No two technologies are alike and thus agreement terms are developed on a case by case basis. The licensing staff is committed to working out an arrangement that is both advantageous to your company and that provide a fair return for the university.
- Royalties are “usage-based payments” made by the licensee to the intellectual property holder (The University of Alabama) for each item sold. Royalties typically are based on a percentage of net sales or a fixed price per unit sold.
- Fees are lump sum payments that can be constructed so that payments can be made upfront, at milestones, or at set point in time.
- Patent Reimbursement. An exclusive Licensee typically is expected to reimburse the University’s costs associated with obtaining and maintaining patent protection.
- Equity is compensating the university with ownership in the licensee (through stock). The equity stake in the company is negotiated based on the value of the University’s technology. If a faculty/staff member or graduate student has an equity stake in a licensee or optionee, the agreement must be reviewed by one of the University’s Conflict of Interest Committees and be approved by the University.