Innovative companies involved in commercializing research with universities and federal agencies often cite complicated contracts and uncertainty surrounding the process as a barrier to bringing more technologies to the marketplace. In an effort to remove some of those hurdles, two new initiatives recently were announced from the University of Minnesota (UM) and the Department of Energy (DOE).
Hoping to provide companies with a stronger incentive to commercialize university-based technologies, UM has developed a new approach to intellectual property (IP) allowing companies to pre-pay a fee and receive an exclusive worldwide license with royalties taking effect only in case of significant commercial success. Agreements established under the new Minnesota Innovation Partnerships (MN-IP) allow a pre-paid option fee that amounts to 10 percent of a sponsored research contract or $15,000, whichever is greater. It includes an option to exclusive license with pre-set terms, no annual minimums or fees, and no time limits or milestones. In exchange, the university would collect a 1 percent royalty fee if annual sales involving licensed intellectual property exceed $20 million.