The official UW policies regarding intellectual property and technology transfer are Executive Order 36 and Administrative Policy Statement 59.4. The answers provided below are not themselves policy. These are intended to provide short answers to questions that frequently arise during license negotiations.
Licensing terms – Financial issues
Licensees benefit from the UW reputation, and usually from federal and state funding, university resources, and commercialization support as well. To assure a balance of interests, the UW, its departments, schools, and inventors should share in successes. MORE
Attorneys or business people unfamiliar with licensing technologies from universities are sometimes surprised that UW C4C licenses require financial consideration. In the case of spin-out companies founded around UW innovations, this includes an equity position in the company. To assure a balance of interests, the UW, its departments, schools, and inventors should share in successes.
The UW contribution goes far beyond the costs of patent prosecution, C4C infrastructure and staff. UW researchers, even the most independently innovative, benefit from the UW’s reputation in filing for and winning federal research support. They benefit from UW colleagues, graduate students, and a broad research base. They also benefit from Washington State support of our public university and the 150 years of donor contributions to buildings and programs.
And why equity? Spin-out companies from the university benefit from the UW reputation, which adds both value and credibility to the new business venture. It is hard to predict how a start-up will achieve its success, and an equity position preserves the UW’s opportunity to share in that success. LESS
UW licenses may include an upfront fee, equity, maintenance fees, milestone payments, patent cost reimbursement, a running royalty, minimum annual royalties sublicensing fees, and assignment fees. The terms included will vary depending on the business plans of the licensee. MORE
When a negotiator has not licensed from a university before, they sometimes assume that a license will come with a single financial term – one lump payment, or an all equity deal. This does not ensure all parties benefit from successful commercialization of the technology, due to the variety of business models that may be used to generate revenue. In licensing early-stage technologies, the university uses a balance of financial terms to give the licensee maximum flexibility in its business model. If a licensee is confident that a specific business model will be used to generate revenue, the financial terms can be simplified to reflect the narrower business needs. LESS
An upfront fee is included in all licenses unless it is a start-up. The upfront fee is usually lower than the upfront fees you would see in a license agreement between two companies, to reflect the early stage of the technology. MORE
An upfront fee is included in all licenses unless it is a start-up. The upfront fee is usually lower than the upfront fees you would see in a license agreement between two companies, to reflect the early stage of the technology. The fee is included as partial compensation for the value of the intellectual property being licensed and for the benefits that the licensee receives when seeking resources to develop the technology through the association with the university. The upfront fee can range from $10,000 to $500,000 depending on the value of the intellectual property being licensed, the market opportunity, and the investment of resources required to bring a product to market. LESS
Milestone payments are a mechanism to make multiple, lower payments as the technology is de-risked as opposed to a larger upfront payment. MORE
Milestone payments are a financial term more common in regulated industries and with technologies that will take a long time to reach market. Since the value of early-stage technologies can be unclear at the time of licensing, milestone payments associate a schedule of licensing fees with the regulatory requirements that reflect inflection points in the valuation of the company or technology.
Milestone payments can also be used when the parties choose this mechanism in compensation for lower upfront fees as a mechanism to share value as the technology is proven. This decreases risk to the company by allowing payments for the innovation to be spread over time and to be made only as the innovation proves to be valuable, rather than paying for the technology in the upfront fee.
It is a popular mechanism for sharing value when technologies are early stage and still carry significant risk. The milestones that trigger payments are generally a subset of the milestones used for diligence milestones.
These often occur prior to first sale of a product, and are designed to ensure that the company continues to develop a product based on the licensed technology. MORE
Maintenance fees often occur prior to first sale of a product, and are designed to ensure that the company continues to develop a product based on the licensed technology. The license includes diligence milestone dates that are generally several years apart, and maintenance fees encourage companies to actively consider their plans in the interim as the fee becomes due. These maintenance fees may start immediately upon licensing, or for start-ups, a couple of years after licensing. Typically these fees end when product sales begin. LESS
Net sales are the basis for calculating royalties. The net sales definition defines any reductions from total revenue for a given product a licensee may take before calculating the royalty due under the license. MORE
The net sales definition allows the licensee to deduct costs directly related to delivering the product to the customer. These deductions must be easily verifiable, such as shipping or discounts included on the customer invoice. Many of these are industry standard deductions, and due to the accepted understanding of these terms, modifications to this standard language will not be considered if they create uncertainty in how the company will calculate the royalty to the UW, or include non-standard deductions. LESS
When a product is developed based on technology licensed from UW, the company generally pays a percentage of each sale, or a dollar amount for each sale, to the university as part of the payments under the license. Royalties are most often a percentage of the net sales; net sales are defined as the total sales amount minus agreed-upon deductions. Royalties are the most common mechanism to share success between a licensee and licensor. MORE
It is a standard practice to have the return to all parties be in some part proportional to the actual return on investment. The actual percentage, or royalty rate, varies from agreement to agreement, based on such factors as product lifetime, typical profit margins, importance of intellectual property in value creation, and what is expected for any given industry. They are always kept low enough to ensure the company can be competitive. The royalty rate will also vary with stage of the technology development at time of licensing.
Occasionally, a company requests the royalty be a percentage of profit, rather than Net Sales; however, there is no standard way to calculate or verify profit for a specific product. This is why Net Sales is used, with a lower percentage royalty than if it had been calculated on profit.
Minimum annual royalties are used to ensure the licensee remains committed to maximizing the dissemination of the innovation, including actively marketing it, for the life of the license. MORE
This is a minimum amount that the company commits to paying the University each year in running royalties. It often will start low as the company builds its market size. The goal is to ensure the company continues to appropriately market the product, and does not let the innovation languish following first product introduction. LESS
Sublicensing consideration is the revenue received by the licensee from licensing the UW’s intellectual property to another party to develop, rather than developing, marketing, and selling a product themselves. MORE
Increasingly, companies do not anticipate taking a product all the way to market themselves, but rather expect to transfer the rights they have licensed from UW by entering into a sublicense with another party to finish development. This is a different business model that means different financial sharing between the University and the company. It requires less investment and derives more of its profits directly from the University-licensed intellectual property, rather than a model that anticipates developing and selling products directly. The Sublicensing Consideration paid to the University is a percentage of the total non-royalty income received by the company in return for the sublicense of University intellectual property. This percentage will decrease as value added by the company’s technology development increases. This consideration is separate from the royalties due to the University from sales made by either the company or a sublicensee. LESS
Acquisition consideration is the revenue received by a company for selling all of its assets. Where the university license includes equity, it also includes a percentage of the acquisition consideration if the company is sold prior to reaching any milestones or receiving investor funding. This fee is stepped-down as the company adds value to the technology, going to zero once the company achieves substantial operations or when the company has received Series A funding. MORE
Some companies may choose to be sold to an existing company very early in their life, rather than begin the research and development necessary to bring a product to market. While companies need flexibility to make appropriate strategy choices, exiting very early through sale of the company is a different business model requiring less investment than developing a technology through to product introduction. This is particularly problematic where the university could have done a direct license of the technology rather than the start-up acting as a broker. This fee is negotiated to ensure all parties receive appropriate benefit based upon contribution to the total value. LESS
Start-ups benefit from the UW reputation, and usually from federal funding, state funding, university resources, and commercialization support as well. To assure a balance of interests, the UW and its departments and schools should share in successes. This sharing directly supports the entrepreneurial culture at the UW. MORE
Start-ups from the university benefit from the UW reputation, which adds both value and credibility to the new business venture. The UW contribution goes far beyond the costs of patent prosecution, C4C infrastructure and staff. UW researchers, even the most independently innovative, benefit from the UW’s reputation, its broad research base, and its faculty and graduate students.
It is hard to predict how a start-up will achieve its success, and equity preserves the UW’s potential benefit as the start-up grows. If the start-up is successful, proceeds from the equity will be added to the 150 years of contributions from UW donors and from Washington State to enhance the quality of UW research and entrepreneurship.
Most of the equity in a start-up is issued to the founders (usually including some UW researchers), to outside management, and to investors. LESS
Licensing terms – Non-financial issues
As standard practice, universities retain control of intellectual property protection for the invention, include diligence milestones for the development of the technology, and require indemnification and product marking. MORE
The UW’s license agreement includes a number of standard non-financial terms that are based on university mission and policies and state or federal law. For background on the philosophy behind university licensing practices, we recommend the Association of University Technology Managers guide Nine Points to Consider in University Licensing and the National Academy guide Managing University Intellectual Property in the Public Interest.
As standard practice, universities retain control of the patent prosecution for the university invention, include diligence milestones for the development of the technology, and require the licensee to indemnify the university and to mark products to give notice of any protected intellectual property (patents, copyrights, trademarks) that is included.
The choice of law for any license with the University of Washington will be the laws and courts of Washington State. The UW is a state agency.
As a public university, we also give notice that any confidentiality provisions are limited by the Washington State Public Records Act. If federal funding supported the development of the technology, then there will be additional requirements from the Bayh-Dole Act.
The University has a different mission and role in technology development than a company. A great deal of legal time and associated expense can be avoided by familiarizing yourself with the terms that are important to the university. MORE
The mission of the University is research and education. University technology licensing is an important channel for producing impact from university research, but it is a secondary activity and must complement and support the research and educational missions. Technology licenses cannot introduce risks that would potentially consume time and resources beyond the benefits of licensing.
As standard practice, universities will retain control of IP protection for the invention, will include diligence milestones for the development of the technology, will require indemnification by the licensee for the licensee’s activities, will explicitly disclaim most warranties, will require a release from the licensee from any claims based on rights granted in the license agreement, and will reserve the right to continue using the technology for research, teaching, and other academic purposes.
As a public university, we also give notice that any confidentiality provisions are limited by the Washington State Public Records Act. If federal funding supported the development of the technology, then there will be additional requirements from the Bayh-Dole Act.
Many of these are explained in more detail in separate FAQs. LESS
Universities want their licensees to demonstrate that they are actively developing the licensed innovation to move it to the market or to patients. The goal is to deliver impact from university research, and these milestones enable the university to require that licensees are doing that. MORE
University technologies are licensed at a very early stage. If a licensee is tying up rights in a technology, the university needs to be able to verify that the technology is actually being developed. The diligence milestones are based on the licensee’s plan for development. If the licensee stops developing this technology, then the university has an opportunity to seek another partner to commercialize this technology.
Understandably, not every original licensee of a university technology proceeds to develop it into a marketable product. Large companies sometimes decide a licensed innovation is no longer a priority, and start-ups may pivot in response to market feedback or may be daunted by the hurdles of starting and growing a business. The UW usually works with struggling licensees but also considers relicensing the innovation to another company prepared to invest resources and continue development.
If federal funding supported the development of a technology, then there will be additional requirements from the Bayh-Dole Act such as having language in the license to ensure that the licensee is in fact developing the technology.
For unlicensed technologies, the university oversees the filing and prosecution of any patent applications. Once a technology is licensed, C4C seeks guidance from its licensees prior to incurring expenses in patent prosecution, and licensees have the opportunity to opt out of participating where they don’t see value. The licensee has the final say in how patent prosecution is managed unless the desired action would compromise the value of the intellectual property. MORE
Because the patents are protecting the intellectual property of the University, it is critical that UW ensure applications are not dropped, or prosecuted without sufficient diligence. UW also has reporting obligations where the invention arises from federally funded research.
The UW oversees the protection of its intellectual property, but does so in consultation with its licensees. For start-ups in particular this provides several benefits.
- Economies of Scale: UW licensees benefit from UW’s billing arrangement with its law firms, and the responsiveness of these law firms given the large quantity of work we do with them. Law firms tend to charge venture capital financed companies more than they charge state universities that have negotiated fixed billing rates.
- Expert oversight: C4C’s patent portfolio managers (who are members of the patent bar) and law firm trained paralegals save our licensees significant billable time through their own contributions as well as through expert management of high-quality patent prosecution through law firms. Start-up companies in particular rarely have claim construction expertise or available staff time to actively review billing and quality.
- Leveraging continuity: Since UW remains the client, our licensee benefits from continuity with the patent counsel who in many cases has reviewed prior art, drafted the application after consultation with the inventive team over claim construction, and who were originally chosen because of their deep subject matter expertise and ability to work with university researchers. There is often a considerable cost for new counsel to familiarize themselves with a project; they must study the prior art, interview the inventors, and reconstruct strategy.
The standard language for patent prosecution is as follows:
“University, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. University shall request patent counsel to inform Company of the status of the prosecution of the Licensed Patents, including delivering to Company written and electronic communications from all patent offices and foreign counsel, and University shall consult with the Company on the prosecution of the Licensed Patents. Company’s suggestions and requests regarding patent prosecution will be reasonably considered and included unless detrimental to University’s intellectual property rights.”
The C4C license language guarantees the company can direct C4C to file additional applications or pursue broader claims as makes sense for the company. LESS
As universities, our core activity is research and education. We do not have the controls, revenues, or insurance needed in order to provide more than very limited representations. We make no warranties, and we require indemnification. MORE
The intellectual property developed at the UW stems from research and educational programs, not from a product development effort. While technology licensing is an important channel for producing impact from research, it cannot compromise the primary mission of research and education.
The University does not have control over what the final product would be. Due to the early stage of the research and the company’s initial business plan, at the time of licensing we may not even have a full description of what the ultimate product is conceived to be. In almost all cases, that vision changes over time as the company proceeds through development and manufacturing.
Thus, the University cannot warrant that the technology licensed is fit for any given purpose, or that the company will not have to acquire additional intellectual property rights to be free from infringement claims. The University makes this lack of representations and warranties explicit, and also requires the company to release the University from any claims. LESS
The University makes this lack of representations and warranties explicit in the following standard disclaimer:
“University disclaims and excludes all warranties, express and implied, concerning licensed intellectual property and each licensed product, including, without limitation, warranties of non-infringement and the implied warranties of merchantability and fitness for a particular purpose. The University expressly disclaims any warranties and makes no representations that any licensed patent(s) will be approved or will issue; concerning the validity or scope of any licensed patent; or that the manufacture, use, sale, lease or other disposition of a Licensed Product will not infringe a third party’s patent or violate a third party’s intellectual property rights.”
The University cannot warrant that the technology licensed is fit for any given purpose, or that the company will not have to acquire additional intellectual property rights to be free from infringement claims. LESS
The standard release language is as follows:
“For itself and its employees, Company hereby releases University and its regents, employees, and agents forever from any suits, actions, claims, liabilities, demands, damages, losses, or expenses (including reasonable attorneys’ and investigative expenses) relating to or arising out of (i) the manufacture, use, lease, sale, or other disposition of a Licensed Product; or (ii) the assigning or sublicensing of Company’s rights under this Agreement.”
The University does not control the development and manufacture of the product. The company must take responsibility for these aspects of commercialization by releasing the University from any lawsuits or claims that arise from use of the technology and intellectual property by company. LESS
The standard indemnification language is as follows:
“Throughout the term of this Agreement and thereafter, Company shall indemnify, defend, and hold University and its regents, employees, and agents harmless from all suits, actions, claims, liabilities, demands, damages, losses, or expenses (including reasonable attorneys’ and investigative expenses), relating to or arising out of the manufacture, use, lease, sale, or other disposition of a Licensed Product, including, without limitation, personal injury, property damage, breach of contract and warranty and products-liability claims relating to a Licensed Product and claims brought by a Sublicensee.”
The University does not control the development or manufacture of the product. The company must take responsibility for these aspects of commercialization by indemnifying the University against any third party claims.
In some cases, a company will suggest the indemnification or release should be mutual. Although this is fairly common between two commercial entities that jointly develop a product, it does not reflect the nature of the University/company relationship because the company is in full control of the quality of the final product.
All universities retain the right to continue to make and use any technology for their own internal, non-commercial research and educational purposes to ensure licensing doesn’t interfere with the core mission of the university. MORE
Universities are open collaborative research communities. Although we license the rights for commercial development of a technology, we have to preserve the technology’s role in ongoing research and education. This is critical to maintaining and advancing the University’s mission and to encouraging the development of inventions that serve the public good.
This reservation of rights is expressed in the following standard language:University reserves all rights not expressly granted to Company under this Agreement. University retains for itself and other not-for-profit organizations an irrevocable, nonexclusive license to make, have made, and use products, processes, and other subject matter covered by the Licensed Patents in the Field of Use for academic research, medical, instructional, or any other academic purpose.
Expressly included within this University reservation of rights is the right (i) to use the Licensed Patents in sponsored research or collaborative research with any Third Party but only to the extent no such Third Party is granted any rights to the Licensed Patents or to commercialize Licensed Products, (ii) to grant material transfer agreements to materials whose composition of matter is covered by the Licensed Patents where the use of such materials is restricted to academic research, medical, instructional, or any other academic purpose, and (iii) to publish any information included in the Licensed Patents or any other information that may result from University’s research.
The University licenses, rather than sells, intellectual property created at the UW. It does not assign ownership in IP to the company. Standard language will include a license to intellectual property created at the UW with rights and obligations included in the license to advance the interests of both parties, including the UW’s interest in ensuring the technology reaches customers or patients. MORE
Consistent with the practices at peer institutions, the University licenses, rather than sells, intellectual property created at the UW. It does not assign ownership in IP to the company.
The UW wants to ensure that the company fulfills its obligations under the license agreement. If the company stops developing and “shelves” the licensed technology, the University wants the technology returned so that it can re-license it and ensure maximal public impact and benefit. If the company does not fulfill its contractual obligations under the license agreement, the University, as the owner of the intellectual property, has far greater ability to enforce these obligations than if the intellectual property had been assigned.
Standard language will include a license to intellectual property created at the UW — not assignment of the intellectual property — with rights and obligations included in the license to ensure the interests of both parties are advanced.
The university reports to its stakeholders that a license has been signed and names the technology and the licensee. We do not provide more specific details in our standard reports, but by law, we may need to release portions of the license agreement if a request is made under the Public Records Act. MORE
As a state agency, the UW’s commitment to confidentiality is qualified by the Public Records Act, as described in the following standard language:University is an agency of the state of Washington and is subject to the Washington Public Records Act, RCW 42.56 et seq., (“Act”), and no obligation assumed by University under this Agreement shall be deemed to be inconsistent with University’s obligations as defined under the Act and as interpreted by University in its sole discretion. If University receives a request for public records under the Act for documents containing Company Confidential Information, and if University concludes that the documents are not otherwise exempt from public disclosure, University will provide Company notice of the request before releasing such documents. Such notice will be provided in a timely manner to afford Company sufficient time to review such documents and/or seek a protective order, at Company’s expense utilizing the procedures described in RCW 42.56.540. University shall have no obligation to protect Company Confidential Information from disclosure in response to a request for public records.
Public records requests for information that is proprietary to our licensees is rare, and for the few occasions it does happen, the university has processes in place to ensure that information released under a request and does not compromise the licensee’s competitiveness. We want to ensure your information is safeguarded to ensure that the intellectual property licensed from UW has the greatest impact on the public by leading to successful products, treatments, and services. LESS
Yes, all companies licensing from the UW are required to have Comprehensive General Liability insurance, and as applicable, clinical trial insurance. MORE
To ensure the company can meet its obligations to indemnify the University, the company will be required to hold industry-accepted levels of insurance for the term of the agreement, or for as long as the licensed innovation is in use, whichever is longer. For clinical trial insurance, the term is three years beyond the end of the clinical trial. LESS
General questions about technology transfer
Intellectual Property refers to property rights in ideas that are protected through federal and state laws governing patents, copyrights, and trade secrets. Know-how is sometimes also included in intellectual property licenses, and covers ideas and information that is not protected by patent, copyright or trade secret. MORE
The value of intellectual property (IP) is not only in the original idea, but in how that idea is protected through copyright, patent or trademark rights. To appropriately and diligently protect IP created at the UW, we use a management strategy that provides our licensees with the freedom they need to meet their strategic business needs, while giving the UW enough control to ensure the IP is as robust and broad as possible throughout the entire life cycle of the innovation. LESS
Students own their works developed in lecture-based courses or outside of any direct support from UW. If a student is an employee of the UW, including a graduate student doing funded research, then works created through the student’s employment are subject to the UW IP policy (EO 36). If a student participates in a research lab or in sponsored research, the student’s contributions to IP will be handled consistently with that research portfolio. MORE
At the UW a student’s intellectual property created solely as student works belongs to the student. The UW encourages its students to look for opportunities to have impact. This may be in form of scholarly publication, a career in the arts or in industry, or through entrepreneurship.
There are two common circumstances that may result in IP being assignable to the UW. The first is employment at the UW. As an employee of the UW, a student is subject to the same policies that apply to faculty and staff. A very common form of employment for graduate students is to work on funded research projects.
The second common circumstance is participation in a research group, laboratory, or sponsored project. The management of IP generated under these circumstances must maintain the integrity of the research program, acknowledge the use of public resources, and comply with the terms of the sponsored research contracts. A student’s contributions would have the same IP obligations as other participants in this research group, laboratory, or sponsored project. LESS
80% of the proceeds from a license are shared equally among the inventors (for patent rights) and authors (for copyrights) of the technology (26.67%), their departments and schools (26.67%), and the Provost (26.67%). The Provost, schools, and departments invest in research programs. The remaining 20% goes to fund C4C’s patent budget and the commercialization services that provide world-class assistance to UW researchers. MORE
If there are direct costs for the commercialization of this technology, these are reimbursed before any proceeds are distributed. Typical examples of these direct costs are the costs for patent prosecution, for product prototyping, and for consulting services specific to this project.
The inventors and authors together receive 26.67% of the proceeds. As a default, all inventors and authors receive an equal share. Often this default allocation among the team is modified by an agreement, to reflect significant differences in the levels of contributions across the team.
For proceeds from equity received as part of the license consideration, if any of the inventors or authors hold equity personally in this company, then these inventors and authors are excluded from the division of the team allocation. The remaining inventors and authors receive the 26.67% allocated to the team from the proceeds from the UW equity position.
The departments and schools listed as affiliations by one or more inventors and authors together receive 26.67% of the proceeds, of which 75% goes to the departments and 25% to the schools. The division across departments and across schools reflects the division across the team of inventors and authors.
The Provost receives 26.67% of the proceeds, which is applied toward research programs. The Royalty Research Fund (RRF) is supported in part by these funds. C4C receives 20% of the proceeds and invests these in its resources and programs, to provide unparalleled commercialization support for UW researchers.
Project Budgets: The above distribution may be modified by creating a Project Budget to support research that advances this technology. If the team forgoes part of its share in the proceeds, directing this instead to a qualified Project Budget, then the departments and schools match this, as does the Provost.
NOTE: Technologies disclosed before 2003 are subject to an earlier distribution policy. LESS
The UW wants its research to provide significant benefits regionally, nationally, and globally. Some technologies will be fully developed only through the private sector. Bridging the gap between the research result and a manufactured product requires committed time and money, and the UW must provide the early momentum in support of commercialization. Many faculty and graduate students expect to be entrepreneurs as part of their academic careers. MORE
Technology commercialization and entrepreneurship is a small but highly visible aspect of the top research universities. Each year UW researchers will publish tens of thousands of scholarly papers and books. Of these, around 400 will be disclosed to C4C as innovations with commercial potential.
A disclosed innovation starts out as a potentially valuable research result. Additional translational development is needed to make that innovation into a commercial product. Moreover, as anyone who has walked the entrepreneurial path can attest, strong technology is not enough; a greater challenge is developing customers in the face of competitors and in the context of existing products and markets.
Taking a research result and delivering a viable product requires a significant commitment of time and money. A private enterprise team may have to work for years on executing a successful business model. The university needs to create the opportunity for a team and their investors to make this effort by preserving the intellectual property and by supporting university innovators throughout their careers.
The UW will attract top translational faculty and student researchers by offering world-class resources and programs for technology entrepreneurship. LESS
The UW is at the vanguard of commercialization. Annual metrics for university technology transfer place UW C4C in the top tier in the nation. In 2013 we executed more licenses and options than any other single university in the US and placed more technologies into use. The UW ranked third for the number of start-ups launched. MORE
The University of Washington executed more license agreements and had more individual innovations under license in fiscal year 2013 than any other single institution reporting metrics to the professional organization, Association of University Technology Managers. We are third in the country for start-up formation, with a UW record of 17 startups in fiscal year 2013, and are on track for the same number or more in fiscal year 2014.
These impressive numbers mean that the technology licensing staff at the University of Washington have one of the highest deal flows in the country, and are expert at customizing licensing terms to meet business needs across industries and technical areas.