Texas A&M Technology Commercialization has licensed more than 600 technologies, creating a base of knowledge in technology transfer that eases the process of obtaining rights to our patents. We act as liaisons between industry and the sometimes complex structure of the academic environment. We strive to find solutions that benefit our industry partners, our inventors and the A&M System, mutually. Although license agreements vary in terms and conditions, depending on the technology being licensed, there are similarities in structure. The following document is an example of a license agreement that will give you an idea of the terms.
Confidential Disclosure Agreements
Nondisclosure Agreements (NDAs) enable A&M System faculty and researchers to communicate proprietary information for evaluative or collaborative purposes with outside investigators in industry, government and academia. NDAs establish the rights of the receiving party in their utilization of the information. NDAs provide for confidentiality for a specific scope of information and for a specific time period. Most NDAs originating from Texas A&M Technology Commercialization are uni-directional; that is, they cover confidential information from the A&M System to an outside party only. If the outside party finds it necessary for the A&M System to receive their proprietary information, then bi-directional NDAs are available through the appropriate sponsored research office. This policy removes the proprietary information belonging to a third party from the office which prosecutes patents for the A&M System.
A license agreement gives you the ability to use A&M's rights to intellectual property in order to develop that technology for commercialization. License agreements with A&M typically include some combination of the following elements:
Initial License Fee
This fee is paid after the license agreement is signed. The amount of the fee is dependent on the market value of the technology.
Annual License Fee
This is a recurring annual fee that is occasionally used when it is difficult to determine a basis for royalties.
These fees reflect the direct cost associated with seeking national and/or international legal protection for the technology.
Many licensed technologies at A&M need a commercial partner for further development. Making developmental milestones a part of the license agreements helps to define what is expected of the commercial partner in taking the technology forward.
These fees are paid on sales of the licensed technology. They may be calculated as a percentage of sales or on a per-unit basis.
Minimum Annual Consideration
At the end of each year, A&M expects a minimum royalty payment for a technology. Any actual royalties paid count toward the minimum annual payment. These minimums are designed to encourage the continued development and marketing of the technology by the licensee, with the expectation that true royalties will far exceed the minimum annual consideration.
When an exclusive licensee sublicenses an A&M technology, we require financial consideration in the form of a sublicense fees. This is normally based on sales, as with royalties described above.
These agreements give a company the right to review a technology for a period of time to determine its viability and value to the company. During the option period, A&M maintains the technology's availability, should the company wish to exercise their option to license the technology. A one-time fee is charged for such rights.
Material Transfer Agreements
These permit biological materials and similar specimens owned by A&M to be transferred to researchers at other universities or companies.