Licence Agreement
When to conclude a licensing agreement?
A licensing agreement gives a third party the right to utilize intellectual property (patents, trademark, copyright, know-how, etc.) under certain obligations and for a fee. The giver of the license (hereafter licensor), however, remains the owner of the intellectual property.
IP rights are licensed by universities for several reasons, i.e. ownership is not assigned to the licensee. Under a license the diligence obligations of the licensee to develop and commercialize the technology can be better controlled and, if required, enforced. Moreover, a licensing strategy provides the means to exploit IP rights as broadly as possible through licensing of different fields of applications to different companies.
What needs special attention when concluding a licensing agreement?
Licensing is a complex field where many aspects need to be considered and coordinated. An exact definition of the license (exclusivity, field of application, geographic area, etc.) is necessary. Particular attention must be paid in the case of an exclusive license to set a framework that obliges the licensee to develop and market the subject of the license. The expected market, the product margins, the scope of the intellectual property, the state of development of the technology, etc., are examples of subjects that will influence the type and the size of the licensing fee. A licensing agreement is therefore adapted to each case, which requires intense discussions between the licensor and licensee. The aim is to reach a fair and balanced agreement between the university and the licensee that provides for an adequate share amongst the university and the researchers in a commercial success.
Support provided by Unitectra
Unitectra will draw up the licensing agreement for you as well as examine any contract you received from an industry partner. In addition, we will support you in the search of a suitable commercial partner. Unitectra will conduct the negotiations with the licensee to optimize the deal for you.
Any license agreement needs to be approved and co-signed by the responsible member of the Executive Board of the University (Basel: Vice Rector for Research / Bern: Director of Administration / Zurich: competent Vice President).
Unitectra is responsible for the monitoring of active licensees and ensures that the licensees fulfill their contractual obligations. This includes the control of the development, sales or accounting reports.