Re: Assistance with Licensing/Commercialization of Intellectual Property Dana Bostrom 05 Jun 2007 07:00 EST

Barbara,

My advice would be to work with your local university or a firm who has worked extensively with universities, as the expectations are different from other inventors expectations.

It is very common for one univ to take on management of another's portfolio when they share an inventor or invention.  The standard fee for that activity is about 20%.  Your situation is different, but that data may be helpful.

Dana

Dana Bostrom
UC Berkeley

-----Original Message-----
From: "Barbara Gray" <xxxxxx@VALDOSTA.EDU>
To: xxxxxx@hrinet.org
Sent: 6/4/2007 11:21 AM
Subject: [RESADM-L] Assistance with Licensing/Commercialization of Intellectual Property

I'm at a PUI with no tech transfer office and not much experience with
licensing/commercialization of IP.  The state university system does have a
legal firm that assists with patent filing and the agreements with
licensees, but I don't think they're much help in identifying potential
licensees.  I know there are firms that, for a cut of future royalties, will
assess the IP for commercial viability and will market it for a nominal up
front fee, but I'm having difficulty identifying them.  If you've used one
of these firms, would you please let me know who they are and where they are
located.

If we can't find a firm to assess and market the IP, an alternative for us
may be to enter into an agreement with one of our larger sister institutions
that has a Tech Transfer office.  If that is the route we go, I have no idea
what a reasonable compensation for the other university would be.  If you
are from a small school and have arranged for another institution to manage
tech transfer-especially marketing the IP--for you, can you give me an idea
of the financial arrangements and whether, in retrospect, they seemed fair?

Feel free to respond directly to me if you don't want sensitive information
posted.  If anyone wants a synopsis of responses, I'll be happy to send that
out with identifying information removed.

Thanks.

Barbara

Barbara H. Gray

Director of Grants & Contracts

Valdosta State University

1500 North Patterson Street

Valdosta, GA  31698-0429

Telephone:  229-333-7837

Fax:  229-245-3853

Email:  xxxxxx@valdosta.edu

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