Licensing your invention

Commercializing a university research innovation is one way to transfer that discovery and knowledge into real-world applications that create social and economic growth and value. Commercializing can take many forms, the two most common are licensing or creating a spinoff. Regardless which you choose, both begin with completing a Report of Invention (ROI)The university’s Technology Transfer Services team can help you explore both options, and which is best for you. The University of Alberta's licensing process is outlined below, followed by some frequently asked questions.

If you think your research has created a new innovation, it is important to submit an ROI before any public disclosure about that discovery (e.g., publication, talk, poster) because that disclosure could affect your invention’s protection.

 


Assign IP to university

TTS team assesses commercial and patent potential

TTS team initiates patent filing if applicable at University’s cost

TTS identifies and connects with potential industry partners in consultation with inventor(s)

University enters licensing deal with industry partner(s)

University shares licensing revenue with inventor(s)
(e.g., 3% licensing deal: inventor gets 1%; university 2% to re-invest back into commercialization)

Keep IP ownership

Inventor arranges commercial and patent potential assessment

Inventor initiates patent filing if applicable at inventor’s cost.

Inventor identifies and connects with potential industry partner(s)

Inventor enters licensing deal with industry partner(s)

Inventor(s) shares licensing revenue with university
(e.g., 3% licensing deal: inventor gets 2%; university 1% to re-invest back into commercialization)

Licensing Frequently Asked Questions

I want a company to license my innovation

What is a license?

A license is a legal agreement under which an owner grants permission to another party (the "licensee" to use its property in return for compensation. In Intellectual property / technology licenses, there are generally terms and conditions including financial payments, restrictions on how, when or where the technology can be used and performance requirements to ensure that the technology reaches the market. Licenses can usually be terminated if the licensee fails to honor the terms.

How do I make a decision on whether or not I should assign IP to the UAlberta? Things to consider are outlined below. This is an important decision, contact the technology transfer services (TTS) team for more information.

Why would I assign my intellectual property to the University of Alberta?
If you assign the IP to UAlberta, you will receive help from TTS in assessing patentability and initial patent costs (subject to limits) will be covered. TTS will also identify and contact potential industry partners who might be interested in your licensing the technology. If a suitable company is found UAlberta prepares and signs the legal agreements necessary to grant the company use rights to the technology through a license agreement.
Why would I retain IP ownership (independent commercialization)?
You may choose to keep ownership of IP if you are comfortable with taking the legal and financial responsibility for patent assessment, initial patent filing, marketing of the technology and preparation/signing of legal agreements to transfer the IP, or license the use of the IP (technology) to a company.
What are the implications of my decision on IP ownership on revenue sharing?

For technologies assigned to UAlberta, 1/3 of the net revenue that UAlberta receives from a license is given to inventors. For technologies owned by inventors, 1/3 of the net revenue received by the inventor(s) is given to UAlberta.

i.e.

UAlberta assigned IP: If UAlberta receives $3,000 in net revenue from a licensee, UAlberta keeps $2,000 and gives $1,000 to the inventors.

Inventor-owned IP: If inventor receives $3,000 in net revenue from a licensee, the inventor keeps $2,000 and gives $1,000 to UAlberta.

Can UAlberta guide me in making a decision on IP ownership?
Yes, UAlberta, through TTS, can help you understand the implications of the two options. The final decision, however, is yours to make. You may seek independent counsel before arriving at your decision.
If I keep ownership of the IP, why do I need to share commercial revenue with UAlberta?
The innovation was developed using public funding and infrastructure. The money UAlberta receives from commercialization is reinvested in the commercialization process.
If I keep ownership of my IP, can I license/transfer ownership (sell) to another party?
Yes, however UAlberta’s permission is required for the first commercial transaction related to the IP
If I give my IP to UAlberta, can I choose or recommend commercial partners for my technology?
Yes, TTS will consult with you on the choice of commercial partner.
If I give my IP to UAlberta, do the inventors have a say in the financial deal terms for a license?
Yes, TTS will consult with you on the deal structure and terms.