Technology Transfer : Information for Industry

We welcome your interest in the University of Toledo’s technologies and look forward to the opportunity to work with you.  In support of the University’s mission to improve the human condition by making available the benefits of its discoveries conceived and developed on campus, the University is committed to transferring technology to the commercial sector and employs a team with a proven track record in the protection and transfer of intellectual property to the commercial sector.

Accordingly, the University’s licensing staff works together with its faculty to identify potential commercial opportunities and firms to develop the intellectual property so it will be marketed and ultimately licensed to a company that is in the best position to ensure the invention becomes a commercial product. 

Depending on your needs, a number of different arrangements are available.  License agreements, sponsored research agreements, material transfer agreements, and option agreements are some of the mechanisms utilized for transferring rights to the University’s technology. 

Transferring existing technologies from the University to industry is most often accomplished through a licensing agreement between a company and the University.  For a complete list of the University’s licensable technologies, please visit Available Technologies to view brief descriptions.  More complete descriptions may be provided upon request, but keep in mind that a Confidentially Agreement may be required in order to view any confidential materials for inventions that have not been publicly disclosed.

If the University does not currently have available a licensable technology solution that meets your needs, you may wish to consider sponsoring University research through a Sponsored Research Agreement.  A Sponsored Research Agreement may present a viable option for companies interested in obtaining industry-focused research into groundbreaking technology while realizing substantial cost benefits since the University typically pays up to 75% of overhead costs whereas the company is often responsible only for the cost of salaries, materials, equipment and supplies, and 25% of overhead expenditures.

While technology transfer continues to gain commercial interest and recognition as a valuable resource to the business community, apprehensions are occasionally voiced by potential industry partners that seem to reflect some level of misunderstanding regarding the nature of partnerships between the University and industry.  Some commonly held myths:

• Myth ─ University Professors lack industry experience and may be unable to appreciate the pressing needs and objectives of companies.
  
  
• Truth ─ Many Professors have industry experience and have themselves formed successful spin-off companies to transfer benefits of research results into commercial enterprises. 
  
  
  
• Myth ─ Universities must publish all research results, thereby depriving an industry partner of any competitive advantage that might otherwise be realized through confidentiality of research results and exclusive rights thereto.
  
  
• Truth ─
  
  • The University may agree to withhold publication entirely where such a term is negotiated as part of a Sponsored Research Agreement. 
    
    
  • Absent a Sponsored Research Agreement, the University routinely withholds publication of any research results that are likely to become commercialized until such time that a provisional patent application can be filed for any new, useful, and non-obvious invention.
    
    
  • Note however, that the U.S. Patent & Trademark Office publishes patent applications 18 months from the filing date of the application (with certain exceptions).
    
    
    
• Myth ─ Negotiating license terms with a University is a slow and difficult process. 
  
  
• Truth ─ The University of Toledo employs a team with a proven track record in transferring intellectual property to the commercial sector.  In fact, two independent sources have ranked UT nationally among the top 10 universities in licensing technology and launching start-up companies when taking research expenditures into account.
  
  
  
• Myth ─ University research is directed exclusively toward pursuit of knowledge rather than toward usable commercial answers.
  
  
• Truth ─ Much of the University’s research focuses on applied research critical to a highly engaged metropolitan University.

The University’s licensing process is designed to transfer commercial benefit to industry while providing a reasonable financial return to the University to recoup research expenditures and provide incentive for continued research.  While most agreements contain simple, standardized components, we are always willing to work with you to provide specific modifications to suit your needs and reach a mutually beneficial agreement.

Because the University is an institution of the State of Ohio, certain key provisions must be incorporated into its licensing agreements:

Reservation of Rights – The University must retain the nontransferable right to continue to make and use any technology for its own internal, non-commercial research and educational purposes.  This provision is necessary because the University receives funding from the state and federal government and often other public and private sources and therefore must adhere to commitments and conditions pursuant to such funding by preserving the right to continue its research uninhibited.

Applicable Law – Because the University is an institution operated pursuant to authority conferred by the state of Ohio, agreements shall be construed and interpreted under the laws of the State of Ohio, without reference to its conflict of laws provisions or the conflict of laws provisions of any other jurisdiction.

Non-Indemnification – The University is an institution operated pursuant to authority conferred by the State of Ohio and by reason thereof may not lend or give credit of the State or otherwise make indemnification.  Accordingly, the University will include a provision in each and every agreement that requires industrial partners to acknowledge that it is expressly understood that the University does not confer upon a company any right or claim to indemnification by the University, be it expressed or implied.

Warranties – The University is an institution operated under the authority of the state of Ohio and does not possess the requisite legal authority to, and therefore does not, grant warranty for any of its representations of, validity of, or scope of any licensed technology or that anything made as a part of a sponsored research agreement will be free from the rights of third parties.  Additionally, the University will make no representations or warranties as to the merchantability or fitness for a particular use.

Other Relationships – In accordance with the University’s obligations to its funding providers and its mission to improve the human condition, advance knowledge through excellence in learning, discovery and engagement, and to serve as a diverse, student-centered public metropolitan research university, the University will expect the company to acknowledge that the University may have ongoing relationships, sponsored research efforts or other interactions with other companies and organizations that may be in competition with the company.

Intellectual Property Ownership - In accordance with ORC § 3345.14, the University shall own all rights, title and interests, including all intellectual property rights, in and to all materials, inventions, discoveries, works of authorship, software, information and data conceived or developed by any employee of the University, which includes the rights to any intellectual property developed using UT facilities.

Costs & Royalties – The University recognizes that most start-ups and small businesses need to preserve cash to fund research, development, and marketing expenses.  Accordingly, the negotiated terms of every license considers the financial needs of the licensee and positions the University as a partner in the business.  However, it is important to recognize that the University has a fiduciary responsibility to the inventors and to the State, and expects to receive remuneration consistent with the value of its technology contribution and in line with comparable industry terms.

Scope of License – In addition to retaining the nontransferable right to make, have made, and use the licensed product, and to practice the licensed process for its own internal non-commercial research and educational purposes, the University reserves the right to limit the field of use and territorial scope of the license to those areas where the licensee can effectively develop and market products.  It is the University’s intention to license available fields of use and territory to other licensees.

For additional information regarding the technology transfer process or to arrange for an appointment to discuss your interest in a license for University technology, please contact the Technology Transfer Office at mailto:techtransfer@utnet.utoledo.edu or by phone at 419.383.6924.