Licensing specialists use many sources and strategies to identify potential licensees and market inventions. Sometimes existing relationships of the inventors, OTC staff, and other researchers are useful in marketing an invention. Market research can assist in identifying prospective licensees. We also examine other complementary technologies and agreements to assist our efforts. We use our website to post inventions, leverage conferences and industry events, and make direct contacts. Faculty publications and presentations are often excellent marketing tools as well.
Studies have shown that 70% of licensees were already known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. Licensees are also identified through existing relationships of OTC staff. Our licensees often license more than one technology from the University. We attempt to broaden these relationships through contacts obtained from website posting inquiries, market research, industry events and the cultivation of existing licensing relationships.
It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention, its stage of development, competing technologies, and the size and intensity of the market. Most University inventions tend to be in the early stage in the development cycle and thus require substantial commercialization investment, making it difficult to attract a licensee.
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful tech transfer results are obtained when the inventor and the licensing professional work together as a team to market and sell the technology.
An invention can be licensed to a single licensee for all fields. Alternatively, it can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each for a unique field-of-use (application) or geography.
This activity generates millions of dollars in annual revenues which are shared among University schools and colleges, departments and units, inventors (and their labs) and partnering institutions. These revenues are reinvested in additional research and education, thus fostering the creation of the next generation of research, researchers and entrepreneurs.
In addition, the resultant relationships created and deepened with these activities support our University missions. They result in additional research projects, broader educational opportunities and collaborative investments, and an enhanced ability to create, retain and share valuable resources that contribute to our quality of life.
License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at the University. University license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the University.
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option. It is rare for the University to have multiple potential licensees bidding on an invention.
Many licensees require the active assistance of the inventor to facilitate their commercialization efforts, at least at the early stages of development. This can range from infrequent, informal contacts to a more formal consulting relationship. Working with a new business start-up can require substantially more time, depending on your role in or with the company and your continuing role within the University. Your participation with a start-up is governed by University conflict of interest policies and the approval of your supervisor.
The AUTM annual surveys consistently show that less than 1% of all licensees yield over $1 million. However, the rewards of an invention reaching the market are often more significant than the financial considerations alone.
Licenses typically include performance milestones that, if unmet, can result in termination of the license. This termination allows for subsequent licensing to another business.
The Inventor's role
To shape your ideas into well-protected and marketable innovations we’ll want your help in working with our team and with patent attorneys, industry, and entrepreneurs. As a Duke Inventor you will be asked to:
- Complete an invention disclosure form and provide supporting publications
- To avoid the risk of losing your patent rights, contact OTC before discussing your invention with anyone outside of the Duke community. This includes discussions with other companies, conference abstracts and peer reviewed publications, among other forms of disclosure.
- Work with us to identify companies and people who could be potential licensees
- Speak with a patent attorney to describe the invention and provide supporting materials
- Review the patent application and any office-actions from the USPTO (US Patent and trademark office).
- Sign any documents or take any lawful oaths as may be required by the USPTO.
- Meet with potential licensees and investors
- While many of the above steps require active participation from you, we will strive to be sensitive to your valuable time.
The invention and licensing process is not always a simple linear series of actions. Each invention has its own challenges and your active input and participation will be a big part of our success.