Licensing technology from a university or research institution can be a powerful way for companies to access cutting-edge innovation. However, this process is fraught with potential pitfalls, especially concerning intellectual property protection. Before you dive in, there are critical steps you MUST take.
In this essential video, Phil Crowley, founder of Crowley Law LLC and a lawyer with extensive experience in technology transactions, highlights key considerations when licensing institutional technology. He stresses one overriding principle: GET IT IN WRITING.
Phil focuses on two major areas of concern:
Preventing Premature Public Disclosure & Protecting Patentability:
The Challenge: University researchers operate in a “publish or perish” environment, where publishing their findings quickly is crucial for tenure and career advancement.
The Critical Risk: If a researcher publicly discloses an invention before a patent application is filed, that technology enters the public domain. This means you can no longer obtain a patent for it, which can be a major roadblock to commercialization and a significant loss of potential value.
The Solution: You need a clear, written agreement with the university (and an understanding with the researchers involved) that prohibits public disclosure of the technology until a patent application has been successfully filed.
Securing Your Rights to the Technology:
Beyond preventing disclosure, you need a formal written agreement that grants your company a legal right to the technology, such as an option to license it under defined terms. Don’t rely on verbal understandings.
Navigating the academic environment while protecting your commercial interests requires careful planning and robust legal agreements. Overlooking these steps can lead to the loss of invaluable intellectual property rights.
If your company is considering licensing technology from a university or research institution, this advice is paramount.