Introduction
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
License Agreements
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:
License Fee
This fee is paid at the time the license agreement is signed. The fee amount
depends on the market value of the technology.
Patent Reimbursement
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.
Development Period
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.
Royalties
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.
Minimum Royalty
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.
Inter-Institutional Agreements
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.
