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Licensing Intellectual Property from Mason
The Office of Technology Transfer is the university point of contact for companies who are interested in evaluating and licensing university intellectual property for commercialization, collaborating on research, or teaming on federal grants that may give rise to joint intellectual property. Mason IP is formally licensed and executed through George Mason Intellectual Properties, Inc. (GMIP).
- Available Technologies
- Licensing an Invention
Agreements to license technologies will be executed between George Mason Intellectual Properties, Inc. (GMIP) and the licensee. Although each agreement will be written to reflect the particular circumstances of the technology being licensed, you can preview the typical terms of those agreements below.
- Evaluating an Invention
Often a company may want an exclusive right to perform
a rigorous assessment of a technology’s potential in
the marketplace. In such instances, we can offer the
company the opportunity to enter into an “Option Agreement”
whereby Mason will agree not to negotiate a license
with another company for the technology during the option
period. Typically there is a one-time fee associated
with securing an option of this nature.
- Sample Agreements
Confidential
Disclosure Agreement (CDA)
In order to maintain maximum patent protection, prior
to discussing a technology with a faculty member or
the Office of Technology Transfer, we request our potential
clients to enter into an NDA.
Material
Transfer Agreement (MTA)
A Material Transfer Agreement is required for any third
party organization using materials created at GMU.
- Licensing Terms
Our goals in negotiating licenses are to transfer technology,
to create a reasonable return on the public's investment,
and to create incentives to recruit and retain the best
faculty. The terms discussed below will typically support
these goals, although it is important to note that in
negotiating terms, we will remain flexible so that the
license agreement can be created to best suit the licensee,
the technology and the marketplace.
- Field of Use
The field of use in the license grant should support
the goal of transferring new technologies to the
fullest extent possible. It should, therefore, be
appropriate to the technology and to the licensee.
- Up Front License Fee
The up front fee is essentially "earnest money".
It should be set at a level that will provide an
incentive to the licensee to create commercial pathways
for the technology, thereby increasing its chances
of reaching the public.
- Exclusivity
Technologies can be licensed on an exclusive or
non-exclusive basis, depending on which is appropriate
in the given instance. Normally, exclusive licenses
will carry with them greater fees and royalties
and will require a higher degree of diligence on
the part of the licensee.
- Patent Costs
Where the licensee has been granted an exclusive
license, GMIP will expect that the licensee will
reimburse GMIP for all past patent costs and will
assume all future patent costs.
- Diligence Milestones
Examples of diligence milestones might include events
such as the patent issuance, a prototype being made
available, the first commercial sale, or annual/quarterly
sales targets.
- Milestone Payments
Diligence milestones can trigger an additional payment
due, particularly when the milestone is an event
which adds value to the technology (as when the
patent issues). Milestone payments may also become
due if diligence milestones are not met.
- Revenue from Commercialization
There are many issues which we will consider in
determining the amount and kind of revenue stream
in the license agreement, including the extent of
the granted license, the market place, the maturity
of the technology, etc. Typical kinds of revenues
might include license fees, running royalties, or
an equity position.
- Sublicensing
The license agreement will detail sublicensing rights
and the fees and/or royalty rates associated with
those rights.
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