Licensing

Licensing involves granting certain negotiated rights associated with your intellectual property (IP) to a third party for them to bring that IP to market. A faculty investigator typically chooses to license their IP because the third party licensee has resources to help reach the desired customer that the faculty member does not.

There are a myriad of scenarios that may lead to licensing. For example, a licensee may approach you after learning of your idea, or you may identify potential licensees and make a plan to contact them to license from you. Since the IP (patent or copyright) is owned by BU, Technology Development is the office that negotiates the license agreement. Some PIs choose to play an active role, while others choose not to play a role in the license.

Getting Started

Before you begin, we always recommend defining your objective and assessing market need to determine if licensing is your best path forward. There are several ways to get started:

  • Contact Technology Development to schedule a consultation. Together, we can help you consider a range of factors to determine if licensing is the best path forward, including your objective and market demand.
  • Do your research. Engaging in customer discovery will help you understand if there’s a real need for your idea or technology. We offer programs for getting started, and can also help you set up meetings with industry experts in your field.

Next Steps

If you decide to move forward, here are some of the steps you may take on the road to licensing your intellectual property. Think of these as “packaging up” your idea to make it as attractive and valuable as it can be to a potential licensee.

  • Protect your intellectual property. You may work with the Technology Development office to file a patent application or copyright for the invention.
  • Compile a license package. A robust portfolio related to your IP will make your idea more attractive to a potential licensee and ensure you’re prepared for negotiation. At minimum, this package typically includes the technology in question, a statement of objective, an IP plan and documents, a list of candidate corporations, and a letter of overture to prospective licensees. We also recommend you include a market need statement and market analysis, a pitch deck and one-pager, terms of an ideal license, and some articulation of the PI’s role. Check out Business 101 for Faculty, some of our programs for getting started, or reach out to Technology Development for support.
  • Market to third parties and select a licensee. Technology Development can work with you to brainstorm a list of candidate corporations and make a plan for shopping your IP around. Most leads result from the inventor’s activity, so we encourage you to leverage your publications, posters, podium talks, conference attendance, consulting work, and networking
  • Formulate terms of agreement. Technology Development will help draft the agreement in the most appropriate form (e.g., startup license agreement), ensuring compliance with University policies, and coordinate with the licensee on your behalf. 
  • Monitor agreement. Technology Development will monitor the licensee’s compliance with the agreement, including achievement of milestones, product development, payment of royalties, patent management, etc.

Sample Plan

Download this Excel document if you would like a detailed set of actions to refer to as you consider your next steps.

Download in Excel

 

Contact OTD

Life SciencesNevena Dimova, Business Developmentndimova@bu.edu or 617-353-4567
Medical TechnologyFrances Forrester, Business Developmentfmf@bu.edu or 617-358-6911
Engineering & Physical SciencesMisty Farrell-Pennington, Business Developmentmfpenn@bu.edu or 617-358-3795
OtherMichael Pratt, Managing Directormpratt@bu.edu or 617-353-4569

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