Technology Transfer

FOR INDUSTRY: OBTAINING COMMERCIALIZATION RIGHTS

How is information shared?
Non-confidential information (issued patents, published articles, etc.) is available upon request. Confidential information (patent applications, articles in press, unpublished scientific data and expertise) will be shared with potential commercialization partners under a confidentiality agreement. You may want to meet UMSL inventors and licensing professionals to discuss a potential technology transfer partnership. For more information contact Tamara Wilgers at 314-516-6884.

What is a technology license?
A license is a negotiated legal contract in which the UMSL grants an individual or company certain rights to make, use and/or sell inventions made by UMSL employees. There are several different types of legal contracts that might be negotiated in a technology transfer partnership:

Option to license:
This is a contract giving a potential licensee a specified amount of time (usually three to six months) to evaluate a specific invention for licensing. During this time, in return for a negotiated fee, the potential licensee usually will be granted exclusive rights to license the invention.
Research contract (R&D):
Many companies lack the internal expertise or resources to develop a technology to the point that it can be commercialized. A common solution is to sponsor work by the inventors at UMSL to develop and test a prototype or to answer specific questions relevant to the company's commercialization plans. The research contract, sometimes referred to as a Joint Development Agreement or Collaboration Agreement, usually includes an exclusive option to license the invention and any new inventions that come directly from the contracted R&D work.
License agreement:
If a company decides it wants to commercialize an UMSL invention, it must negotiate a license agreement that grants the company specific rights in return for payments to UMSL, which are shared with inventors. Payments may include any or all of the following: reimbursement for past and future patenting expenses, up-front payments based on an invention's potential value, milestone payments based on progress toward commercialization and/or sales levels, and royalties on sales. The rights granted in a license agreement may encompass exclusive worldwide rights (e.g., pharmaceuticals); exclusivity by country, region or field of use (e.g., a product with a market that cannot be met by one company); or nonexclusive right to use or sell a technology (e.g., plant varieties and industrial processes).

For more information contact Tamara Wilgers at 314-516-6884.