Earlier this year, WilmerHale Partners Dave Gammell, Barry Hurewitz and Jeff Johnson discussed the basics of licensing and legal considerations for university licensing agreements such as unique aspects of university licenses and differences from commercial licenses; considerations for negotiating a license from your research institution; best practices for working with the university licensing office; and key licensing and deal terms. Here are five things startups need to know about university licensing:

  1. One of the most critical and important contracts to get right is a university IP license, as it is often the lynchpin of commercialization going forward.
  2. Many academic and research institutions have their own licensing office, which is typically the key gatekeeper for negotiation and execution of the license agreement.
  3. In advance of any outreach, review available information regarding the institution’s intellectual property policies. This will tell you a lot about how the institution approaches requests to license its intellectual property. You may also be able to obtain a copy of the institution’s form license agreement online.
  4. Typically, in order to negotiate a license agreement, you must be prepared with a business plan for your company and your proposed commercialization of the technology.
  5. Be sure to negotiate the license terms. Institutions are often faithful to their form license agreements, but there are numerous potential variations on those forms, which your counsel should have experience negotiating with the institution.