Successfully taking an invention from an academic lab and developing it into a marketable product requires significant time, resources and a bit of luck. Sometimes even the greatest ideas don’t make it to the market because the timing is wrong or the public isn’t ready.
Our office, the Technology Licensing Office, does everything we can to support University of Utah faculty innovations; however, there could come a point when we have to shift resources to other opportunities, either after our initial assessment or during marketing efforts. When this happens, we offer the inventor or inventors the opportunity to assume control of the technology and pursue commercialization independently through an Inventor Return License.
When is this decision made?
The decision to offer the technology back to the inventors through an Inventor Return License could happen at any time during the commercialization process and is based on the technology’s potential success as a product.
After a technology is disclosed to our office, we conduct thorough market and intellectual property assessments to determine the best path forward for the specific technology and inventor. If the assessments show that our office won’t be able to support the technology, we inform the inventors in the Executive Summary that is sent at the end of the assessment process.
We also might decide not to continue pursuing a technology later on during the commercialization process if we aren’t seeing success with continued development or marketing efforts.
For example, if we have marketed a technology to a substantial number of companies without interest, our office may choose to stop prosecution of any existing patents and halt commercialization efforts. Similarly, if a technology fails in development or we can’t determine a technology’s competitive advantage, we might choose not to actively pursue commercialization. In either case, we will let the inventors know and offer them the opportunity to assume control and continue pursuing commercialization.
When an inventor chooses to assume control of the technology, we work with the inventor team to execute an Inventor Return License. If the inventor does not want an Inventor Return License, we will close the technology and release the invention to the funding agency.
Details of the Inventor Return License
The Inventor Return License provides the exclusive right to the relevant intellectual property for commercial purposes. We return a technology through a license because federal law and other legal requirements related to foundation funding and sponsored research prohibit us from releasing a technology to anyone other than the funding agency.
This license is not structured like a standard agreement but does include a success clause. This success clause requires a return to the University of Utah through a transaction fee and royalty if certain milestones are met related to acquisition and product or service sales numbers. The agreement also requires the inventor to assume control of future patent expenses and reimburse the existing patent costs over the two-year period following completion of the Inventor Return License, per university policy. There are no other financial obligations associated with the agreement.
