Pathway Map
TECHNOLOGY TRANSFER OFFICER
Preparation overview.
The approach to preparing for the licensing of university-owned IP focuses on three key objectives:
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Demonstrating real-world impact: showcasing the practical applications of university research and planning how the licensee will further invest in and develop the IP to bring it closer to market or user adoption.
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Ensuring proper IP identification and rights: where licensing opportunities arise, ensuring that university-owned IP is properly identified and the university’s rights to license it are clearly established.
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Securing strong commercial terms: when a commercial deal is likely, steps should be taken to secure licensing terms that are fair, commercially sound, and provide appropriate incentives to the original researchers.
Third party rights clearance
The Intellectual Property (IP) to be licensed may have been developed over several years, across multiple university projects. These projects could involve various collaborators from different institutions and companies, as well as multiple funding sources, each potentially governed by separate contractual agreements. It is essential to identify these contributions and understand how each one relates to the overall IP package.
Where confidentiality terms allow, or with consent from relevant third parties, any related funding, sponsorship, or collaboration agreements should be shared with potential licensees. These documents can clarify the University’s rights to license the IP and reveal whether any third parties hold licensing or option rights.
Identify licensee
The responsibility for identifying a potential licensee typically falls to the TTO. However, in many cases, the most suitable licensee may be an existing industrial collaborator already working with the relevant department or research group. As a result, valuable contacts may already be held by the academic team.
Finding new licensee candidates or further developing existing connections should be a collaborative effort between the TTO and the originating academic group. This ensures that both the technical expertise and the commercial/licensing knowledge needed for successful engagement are brought together.
The specific role of the TTO in leading discussions and managing engagement with prospective licensees can vary from one IP commercialisation project to another. Regardless, it is essential that roles, responsibilities, and actions are clearly discussed, agreed upon, and delegated at the outset.
Intellectual property due diligence
IP due diligence is the process that the TTO will undertake with its originators to ascertain the origins of the IP. This process includes understanding what work was done to create the IP, how the work was funded, who was involved in the development of the IP and exactly who holds rights in the IP, especially if any third parties are involved. Most importantly, it assures that the University has the rights to licence the relevant IP.
All of these aspects may involve other collaborating institutions or companies. Evaluating such provenance, along with the ongoing commercial assessment of IP value and understanding the market and industry dynamics, enables the university to justify providing ongoing financial/resource/time support and commitment to the opportunity and IP originators.
Identify
Identifying the types of intellectual property in an innovation is the first step towards commercialisation. Universities use invention disclosure forms from the originators concerned to establish the scope of what has been generated. Different types of IP have different protection mechanisms. For example, logos and phrases can be protected using a Trademark, while technologies such as a novel idea, methodology or concept can be protected by filing a patent. The TTO needs to advise originators on how to secure the IP in a way that will give the best prospects for licensing.
Where IP is registered, mainly by patents but also by designs and trademarks, this will typically form a core part of the value of any licensing deal, so it is crucial to assess which key territories will deliver significant protection. Where software, or other types of copyright IP, are used within the planned total IP package, there is no requirement to formally register IP, as it is automatically established at creation. One consequence is that software IP opportunities require high levels of initial information gathering to ensure that all code is captured, including external software code and libraries used. In these cases, the TTO will be the most experienced and knowledgeable person involved in the IP licensing process, as professional staff (such as patent or trademark attorneys) will not be involved in helping prepare these licensing cases.
Ownership
In the UK, the employer typically owns IP under employment law. However, exceptions can arise, such as when funding terms specify different ownership conditions or when the originators are students who are not employees. Ownership can also become more complex in cases of co-creation with other institutions, potentially leading to joint ownership.
Because of this, the TTO must work closely with the originators to determine the provenance of the IP. In situations involving joint ownership, the TTO should advise the originators on the implications and help determine the best path forward—whether both parties can independently and non-exclusively license the IP or whether a formal agreement is needed to designate one party to lead the commercialisation efforts exclusively.
Barriers
During the due diligence process, encumbrances, which are potential barriers to licensing, may be identified. These typically arise from prior research collaborations that contributed to the development of the IP.
One common type of encumbrance occurs when a university and its research team have worked with external partners on background research. In such cases, those partners may have certain rights to the newly generated IP—most often, option rights, which allow them to negotiate a licence if the IP is necessary to exploit their results.
Another common encumbrance stems from the terms of research funders or sponsors, which may include requirements such as obtaining written consent before commercialisation or agreeing to share revenue from future licensing deals.
When such restrictions are identified, the TTO must plan appropriate steps to address them and inform all relevant parties as early as possible. This is especially important in university collaborations, where such encumbrances are common. Fortunately, these issues are well understood, and standard solutions are available to manage them effectively.