Whether commercialization is accomplished through an existing company or a startup, a license or other agreement is needed to grant the rights to use the university invention.
What is a license?
A license is a permission to use intellectual property granted by the owner or controller to another party. A license agreement defines the rights of the licensee to use the technology and the responsibilities of the licensee to bring the technology to market and to compensate the university and inventor(s). In the technology commercialization context, the licensed intellectual property is usually one or more patents, but it can also be know-how, trademarks, or copyrighted materials such as software.
What other factors are involved in making a deal?
The deal may include other important elements besides the license agreement. For example:
Can there be more than one licensee?
Yes, an invention can be licensed to multiple licensees, either non-exclusively or exclusively, each for a unique field of use (application) or geographic territory.
How do the inventors share in the compensation received by the university?
University compensation can take various forms but is usually some combination of a cash fee, patent expense reimbursements, royalties, and equity in the commercializing entity. As set forth in Board of Regents’ Rules, Rule 90102, 50% of the revenue received by the university after recovery of expenses is generally shared among UT inventors. Distribution of royalties to inventors is described in more detail in the "Revenue and commercialization" section of this website.
In the event of the death of an inventor, his/her share of licensing income will be paid to the inventor’s estate.
What is the relationship between an inventor and a licensee?
The license agreement is between the university and a licensee. The inventor is not a party to that agreement. The inventor will have ongoing obligations to participate in patent prosecution activities and may be asked by the licensee to assist with commercial development activities under separate arrangements with the licensee.
How is software licensed?
OTC assists inventors and authors in determining the appropriate strategy for distributing software and other copyrighted material owned by the university. Distribution mechanisms used by the university for software fall into three main categories:
What open source licenses does OTC recommend?
OTC suggests the following as appropriate open source or source-available licenses:
OTC can assist software creators in selecting the appropriate form of open source license or other method of publication based on:
How does an inventor go about publishing software under open source?
Creators who wish to publish or open source license software owned by the university should take the following steps:
What if my software includes third-party contributions, such as a framework or graphics library?
Open-source software is not necessarily free of licensing encumbrances; third-party components may grant academic rights only or have other restrictions. If you plan to use third-party contributions to the software, it is important to obtain necessary rights from the third-party contributors at the time the contribution is made, so that the university may continue distributing the software. OTC will help with this process.
What is OTC's procedure for disclosing software?
Regardless of the mechanism of distribution of the software (commercial, open source, or dual licensing), creators wishing to distribute software should fully complete, sign, and submit to OTC a Software Disclosure Form. N.B. OTC will not review Software Disclosure Forms for patentability. If the creators believe that the software may incorporate patentable inventions, they should also complete, sign, and submit a Disclosure Form (Physical Sciences). If both disclosure forms are used, they should reference each other. OTC will discuss licensing strategies with the principal investigator or unit head responsible for the creation of the software.
How is copyrighted material licensed?
OTC also manages licensing of all University of Texas at Austin-owned copyrights. To distribute or license copyrighted material owned by The University of Texas at Austin, please contact OTC.
Have other questions about software licensing?
Please contact Jitendra Jain for any questions on licensing of software or copyrightable material.