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Commercialization

QUICK JUMP: Evaluation | License Agreements with an Established Company | License Agreements with Start Up Companies | Sponsored Research Agreements | Distribution of Revenue Received by OTD

Evaluation

When UNC researchers disclose a novel technology to OTD, we first evaluate the technology for its commercial potential based on our Innovation Navigator, which utilizes three major characteristics:

  1. Ability to obtain IP protection. With the exception of tangible property (e.g. mouse models or cell lines), the ability to protect UNC technology through patent, trademark and/or copyright filings is necessary to facilitate commercial development.
  2. Commercial market. When considering the commercial potential of an innovation, OTD leverages its business expertise and considerable industry contacts to evaluate the potential commercial market for the project.
  3. Ability to commercialize. Lastly, OTD will consider how feasible a license agreement or startup company will be to accomplish based on the technology. Note that this consideration differs from the commercial market assessment in that dominant IP, unsuitable project risk and other factors may mean that, despite the existence of a commercial market for a given product, it may nonetheless be prohibitively difficult to execute a license agreement or launch a startup company.

Once a decision has been made to invest in intellectual property protection for a given technology, OTD works with outside counsel to make the appropriate patent, trademark or copyright filings. Subsequently, OTD, together with the innovator, works to develop a technology commercialization strategy for the innovation. The strategy chosen by OTD is based on four key characteristics of the innovation:

  1. Breadth of the intellectual property
  2. Stage of development
  3. Current investment climate
  4. Needs of the principal investigator’s laboratory

The chosen strategy may involve:

  1. Licensing to an established company;
  2. Formation of a UNC spinout company; or
  3. Solicitation of sponsored research from industry.

License Agreements with an Established Company

License Agreements with existing companies are the most common commercialization route for UNC technology. In a typical license agreement, the UNC partner company is allowed to “practice under” the relevant UNC intellectual property in exchange for financial compensation and an agreement to meet performance benchmarks. Arriving at a license agreement is typically the culmination of the licensing procedure, summarized below:

License agreement chosen as the commercialization path

Target partner companies identified

Marketing of non-confidential technology summary package to target partners

Exchange of confidential information with interested partners

Negotiation of business terms of license with interested partners

Negotiation of legal contract with interested partners

Collection of royalties and agreement enforcement

License Agreements with Start Up Companies

Licenses to start up companies typically take longer to complete as the company is still in the process of forming at the time of the license. The University often takes equity in the company in lieu of a portion of license fees to ease the financial burden on startups and support the venture. OTD and UNC support licensing to inventor startups and work with inventors to find sources of funding, legal assistance and leadership for the new company. Terms to inventor startups need to be fair to all parties and not overly favorable to either the University or the inventors to avoid conflicts of interest and OTD and thus are based on appropriate industry standards for similar transactions and take into account the stage of development of the technology and the company.

Sponsored Research Agreements

Frequently, UNC innovations are not well validated enough to warrant investment by a company in the form of a full license agreement, or by investors in the form of a startup company. In such cases, solicitation of sponsored research is a key vehicle for facilitating commercial development. The process of soliciting sponsored research partners is almost identical to that for license agreements, with the exception that the end product is usually a sponsored research agreement, including an “option” for the partner company to license UNC innovations made using company funding.

Distribution of Revenue Received by OTD

OTD receives revenue from licensees and distributes receipts on a monthly basis to inventors, departments and OTD in accordance with University Policy.

  Inventions and Tangible Property Copyright
(University)* 		Copyright
(Inventor)*
After expenses:      
OTD 20% 20% 10%
Inventors/authors 40% 40% 70%
Departments 40% 40% 20%



*See University Copyright Policy for definitions and distinctions.

Revenue may be received over a period of many years and inventors must inform OTD of any changes of address to ensure timely receipt of future income.