The WiSys licensing process is designed to achieve two goals: to return research funding to the UW System and to put the inventions of the UW System faculty to work for the maximum benefit of society. WiSys shares in the development risk by requiring a reasonable initial license fee and a royalty that is received only after a product or process is being sold or otherwise used. Because of WiSys' private, nonprofit status, it can offer its licensees confidentiality, which can be very important when dealing with new product and process development issues.
WiSys is organized to make licensing convenient and straightforward. You will be working with an experienced licensing manager who was recruited from industry. WiSys will also work with you to custom tailor an agreement to meet your specific needs.
Below is a checklist of what is required to successfully license a WiSys technology. If you agree with the following statements, we can develop a mutually beneficial working relationship.
- Your company sees the likely commercial benefit to itself of one of the WiSys technologies developed at the UW System.
- Your company has the capability to develop early-stage technology (typical of university research) and is willing to make a reasonable effort to commercialize it.
- Your company is able to demonstrate its serious intent by paying a reasonable licensing fee and reimbursing certain patent costs associated with the technology.
- Your company is willing to share some of the benefits of the commercial use of the technology with WiSys and the UW System through payment of a reasonable royalty on product sales.
Below we provide brief descriptions of the agreements most frequently used by
WiSys. Where appropriate, we have included drafts of the standard versions of
these agreements for your review. These drafts are for illustrative purposes
only and are not an offer. WiSys reserves the right to modify these standard
agreements in whole or in part in accordance with the particular circumstances
of each case.
Confidential Disclosure Agreements
If you are considering licensing a technology for which a patent application has been filed but no patent has yet issued, a confidential disclosure agreement (CDA) may well be your first agreement with WiSys. A CDA allows you to receive copies of the claims submitted with a patent application as well as additional confidential know-how that may be provided by UW System researchers on an as-available basis.
In return for access to the claims and other confidential information, the CDA states that you agree to keep information that is not in the public domain confidential. In addition, you agree not to use the confidential information without first obtaining a license. There is no fee involved.
WiSys normally considers patent applications without claims to be non-confidential. Issued patents are likewise non-confidential, since they are available to the public. WiSys is happy to provide this information at your request without a confidentiality agreement. For each technology where a patent has issued, we also provide a link to the issued patent through the "Technologies Available for Licensing" section of our website.
When you find a technology of interest on the WiSys website, please use the contact form at the bottom of the technology description page or call 608-263-2500. The licensing manager associated with the technology can then prepare a CDA and send it to you for signature.
Access the standard confidential disclosure agreement for WiSys
A license agreement gives you the ability to use WiSys' rights under its intellectual property for a technology, in order to develop that technology for commercialization. WiSys license agreements typically include the following elements:
This fee is paid at the time the license agreement is signed. The fee amount depends on the market value of the technology.
These fees reflect the costs that are incurred to patent the technology. If foreign patents are sought for the technology, the fees may be higher to reflect this.
When a technology needs to be developed over a period of time, WiSys license agreements often provide for a development period. This means that before the license agreement is finalized, the licensee must submit a brief technology development plan. Thereafter, quarterly development reports are required. These reports help to document that active development of a technology is taking place, a requirement for licensing federally funded research. In projects with long development timetables, such as pharmaceuticals, certain progress milestones may be specified along with appropriate milestone payments. These help reduce initial license fees on high-risk projects since these milestone payments are only made if development continues successfully.
These fees are paid when products using the technology are sold. They may be calculated on a percentage-of-sales or fee-per-unit basis, depending on the circumstances.
At the end of the development period, if any, WiSys expects a minimum royalty each year. This is set at a relatively low amount compared to the expected royalties. Any royalties actually earned offset the minimum royalty, so the minimum royalty is normally not an additional fee. These minimums are designed to encourage the continued active marketing of the technology.
Access the WiSys standard nonexclusive license agreement
Option and Sponsor Option Agreements
These give the company the right to review a technology for a period of time to ascertain its practicality and value. During the option period, WiSys agrees to keep open the availability of a license for the company reviewing this technology. A one-time fee is charged.
If the option agreement is for inventions that may be made during the course of UW System research sponsored by your company, the agreement is called a sponsor option agreement.
Access the WiSys standard sponsor option agreement
Material Transfer Agreements
These permit biological materials and similar specimens owned by WiSys to be transferred to researchers at other universities or companies.
These are special agreements between WiSys and other universities, federal labs, nonprofit foundations and industry. These agreements permit WiSys to offer clean license agreements when individuals from other organizations are co-inventors on a technology.