Types of Licensing Agreements
Option Agreement: A short-term agreement, which gives a company the first right to enter negotiation for a license to a given technology. For the duration of the Option, PRF will not actively market the technology or seek other potential licensees. In exchange, the party receiving the Option often pays a modest fee and typically assumes the responsibility for ongoing IP expenses during the period. An option agreement is appropriate when a prospective licensee wants the ability to conduct due diligence on the market or technology before entering into a full license.
Commercial Evaluation License Agreement: Often, the diligence a prospective licensee wishes to conduct on a technology cannot be completed without access to samples or data. In this case, commercial evaluation licenses are used to grant the right to use a technology, under limited circumstance and for a limited time, to evaluate that technology.
Tangible Research Property License Agreement: IP takes many forms, and inventions that are not patentable or copyrighted can still be licensed. For example, cell lines or antibodies can be licensed as a tangible property, where the licensee is granted the right to use and sell those materials that were created at Purdue.
License Agreement: This agreement can be tailored to suit many circumstances and generally represents a long-term partnership between PRF and a licensee. Licenses can grant exclusive or non-exclusive rights. A license typically grants a licensee the right to make, use and sell the technology. The license normally imposes obligations on the licensee, such as the requirement to diligently develop the technology into a product or service and to pay an agreed-upon financial consideration. A license can usually be terminated at the discretion of the licensee, but PRF may only terminate that same license under predefined conditions, usually involving a material breach of the agreement. Upon termination, rights to the IP revert back to PRF.
Express License: Under the “Purdue Innovator Express Start-up License,” Purdue innovator(s) who are the founders of their first new venture formed to develop and commercialize their innovation may apply for this exclusive license under a standard form of license with pre-set terms.
The key to success in licensing Purdue technology is to create a partnership between PRF and the licensee around the mutual interest of seeing Purdue technologies realized as commercial products and services.