Negotiating a license with the University of Melbourne
What to expect when negotiating a license with the University of Melbourne.
The Technology Licensing Services (TLS) team are a world-class technology transfer office that are committed to conducting activities using academic licensing best practice
The University of Melbourne is committed to working with industry to deliver societal benefits through the commercialisation of new technologies, products, and services. However, in general, when compared to industry, universities can be constrained and have different drivers. This is worth bearing in mind when negotiating a contract with a university.
The following are some points to consider if you are intending to negotiate a license with the University of Melbourne:
Universities reserving the right to use licensed technologies for certain purposes
All universities seek the right for their researchers and students to conduct and publish research as this is the core business of a University.
In this spirit, the University of Melbourne seeks the right to use licensed technologies in all fields for ongoing research and to use associated information and data for teaching or research purposes to the extent that this can be achieved in a manner that is compatible with a licensee’s legitimate commercial requirements.
This may include the transfer of tangible research materials (e.g., biological materials or chemical compounds) and intangible materials (e.g. software, databases and “know-how”) to other research organisations for non-commercial purposes.
For many technologies that require extensive and costly development before they can reach the market it may be appropriate to grant exclusive licences to protect the licensee’s legitimate commercial needs. However this needs to be balanced with the educational and public good goals of the University and with the public interest to have access to the practical application of the products of research.
In cases where an exclusive licence is granted, the licence may also commit the licensee to develop the technology appropriately and in a timely manner. In the cases where a lot of development is needed and therefore a long-term exclusive licence is required, the developmental stages should usually be clearly defined and regularly monitored for the duration of exclusivity and would aim to ensure developmental completion and broad dissemination of the technology.
Licensing of 'future improvements'
Licensees often seek control or ownership of all future developments or improvements to a technology. However, such licences tend to have a negative impact on academic laboratories, restricting their ability to receive funding for their research and limiting their ability to embark on collaborations with other universities or commercial organisations. Licensing such future rights can also have impacts beyond the laboratory concerned with researchers who did not benefit from the original license similarly restricted.
Exclusive licences with universities for that reason do not automatically cover improvements or follow-on inventions. Instead licences focus on existing patents or patent applications and only to claims within those that are fully supported by information in the patent or entitled to the priority date of that patent and are necessary for commercialisation purposes. In the cases where improvements are licensed, these are subject to appropriately diligent development requirements.
Conflicts of interest
Conflicts of interest can arise around technology transfer and Universities should anticipate and help to manage these.
Technology transfer offices should be particularly conscious and sensitive about their roles in the identification, review and management of conflicts of interest, both at the investigator and institutional levels. Licensing to a start-up founded by faculty, student or other university inventors raises the potential for conflicts of interest. These conflicts should be properly reviewed and managed by academic and administrative officers and committees outside of the technology transfer office.
The TLS team works in an open and collegial manner with those directly responsible for oversight of conflicts of interest so as to ensure that potential conflicts arising from licensing arrangements are reviewed and managed in a way that reflects well on the university and its community. Potential conflicts will be non-punitively reported to, and discussed with, the relevant Head of Department or, if appropriate, the Dean.
Enforcement of patents and prosecution of infringements
Universities use patents primarily to enable the promotion of its discoveries to benefit society. This may differ somewhat from the commercial aims of a licensee so care must be taken to ensure a resolution that benefits both the university and the licensee and promotes the continued development of the technology.
As such, licences will generally incorporate a consultative approach to any proposed infringement or enforcement action.
Export regulations have exclusion criteria for fundamental research and technology licence transactions must comply with these regulations.