From Idea to Marketplace: Licensing IP at UCF, The Basics
September 9, 2015
Part 1 of 3-part series explaining the process of licensing technology
As America’s Partnership University™, UCF wants to help innovative researchers, entrepreneurs looking to advance technological frontiers, and companies looking for emerging technologies bridge groundbreaking ideas from the laboratory to the realm of our everyday lives—to impact the way we live, work, and play. There are several steps between creating an innovation and bringing it to the marketplace. Over the next month, we’ll focus on how UCF’s Office of Technology Transfer (OTT) can help both researchers and companies transform our world. We’ll also hear from some of the licensing associates about their experiences on the journey to commercialization.
The Licensing Agreement—cutting through the legalese
Admittedly, there’s a lot of legal lingo and jargon that is used in the licensing agreements, so here are some key terms to remember.
Licensing intellectual property, or IP, is a part of the commercialization process, or how IP enters the marketplace. What actually is IP? The World Intellectual Property Organization (WIPO) states that intellectual property is a creation of the mind and is protected in law by patents, copyright, and / or trademarks. These protections help people to earn recognition and/or financially benefit from what they invent or create.
Most of the time, IP at UCF is protected by a patent. The WIPO states that a patent is “an exclusive right granted for an invention and provides the patent owner with the right to decide how – or whether – the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.”
A licensing agreement is a partnership between a licensor (an intellectual property rights owner—in this case, UCF) and a licensee (one who is authorized to use such rights, such as an entrepreneur or industry partner) in exchange for an agreed payment (a fee or royalty). A patent license agreement, dictates how the patent will be used. It is tailored to product development needs as well as the needs of the licensor and the licensee.
Said in less legalese: patents help inventors protect and control their ideas and inventions and license agreements give permission to others to use that patented technology. One good example of how we use licenses every day is with computer software. Ever heard of a EULA—end-user licensing agreement? It’s a contract between the licensor (the software company) and the licensee (the purchaser), establishing the licensee’s right to use the software. Online, the purchaser must click ‘accept’ to agree to the terms before the software is released for use. Sometimes, these licenses come with a timeframe, such as a one-year agreement, like with anti-virus software. Once the purchaser pays the renewal fee, the software is available for use again for another year.
There are many more details that are specific to inventors and industry partners, which we will cover more extensively over the course of this blog series.
Licensing university intellectual property—overcoming challenges and embracing opportunities
Before a product or idea can be licensed and commercialized it must go through our rigorous IP protection process, which you can read about here. OTT guides and supports the commercialization process as thoroughly and as efficiently as possible, setting up both researchers and entrepreneurs for continued success.
Because these innovations are developed in a university environment, not only are they cutting-edge, they are typically in the very early stages of development. This provides both an opportunity and a challenge. The opportunity is for a licensee to have a competitive advantage by supporting the continued research and development of an idea for future revenue. The challenge lies in that this R&D can take a lot of capital and patience.
Success Stories
Many times, that marrying of capital and patience pays off. One of our most successful licensing stories involves something that no Floridian house is usually without: a ceiling fan. By using the design of propellers used on planes, Danny Parker of UCF’s Solar Energy Center (FSEC) was able to create the Gossamer Wind Fan which is more aerodynamic and thus more energy efficient—so much so that the energy savings created by this fan can recoup the purchase cost. Together, Parker and OTT were able to find the right licensee which means you can now purchase this fan at Home Depot or Lowes. You can read more about this success story here.
For the next three weeks, we’ll look at how OTT can help researchers and entrepreneurs achieve success in the marketplace while simultaneously solving pressing problems and making life a little easier and better for all of us. In the meantime, check out the innovative technologies available for licensing on our Technology Locator.
And for more information on how we connect research to industry, contact us.