Licensing Process

Introduction

WARF's licensing process is designed to achieve two goals: to bring additional "margin of excellence" research funding to UW–Madison and to put the inventions of UW–Madison faculty to work for the maximum benefit of society. WARF shares in the development risk by requiring a reasonable license fee and a royalty that is received only after a product or process is being sold or otherwise used. Because of WARF's private, nonprofit status, it can offer its licensees confidentiality, which can be very important when dealing with new product and process development issues.

WARF is organized to make licensing convenient and straightforward. You will be working with an experienced licensing manager who was recruited from industry. WARF will also work with you to custom tailor an agreement to meet your specific needs.

Below is a checklist of what is required to successfully license a WARF technology. If you agree with the following statements, we can develop a mutually beneficial working relationship.

  1. Your company sees the likely commercial benefit to itself of one of WARF's technologies developed at the UW–Madison.
  2. Your company has the capability to develop early-stage technology (typical of university research) and is willing to make a reasonable effort to commercialize it.
  3. Your company is able to demonstrate its serious intent by paying a reasonable licensing fee and reimbursing patent costs associated with the technology.
  4. Your company is willing to share some of the benefits of the commercial use of the technology with WARF and UW–Madison through payment of a reasonable royalty on product sales.

Below we provide brief descriptions of the agreements most frequently used by WARF. Where appropriate, we have included drafts of the standard versions of these agreements for your review. These drafts are for illustrative purposes only and are not an offer. WARF reserves the right to modify these standard agreements in whole or in part in accordance with the particular circumstances of each case.

Confidential Disclosure Agreement

If you are considering licensing a technology for which a patent application has been filed but no patent has yet issued, a confidential disclosure agreement (CDA) may well be your first agreement with WARF. A CDA allows you to receive copies of the claims submitted with a patent application as well as additional confidential know-how that may be provided by UW–Madison researchers on an as-available basis.

In return for access to the claims and other confidential information, the CDA states that you agree to keep information that is not in the public domain confidential. In addition, you agree not to use the confidential information without first obtaining a license. There is no fee involved.

WARF normally considers patent applications without claims to be non-confidential. Issued patents are likewise non-confidential, since they are available to the public. WARF is happy to provide this information at your request without a confidentiality agreement. For each technology where a patent has issued, we also provide a link to the issued patent through the Technologies Available for Licensing section of our website.

When you find a technology of interest on the WARF website, please use the contact form at the bottom of the technology description page or call 608.262.4924. The licensing manager associated with the technology then can prepare a CDA and send it to you for your signature.

Access WARF's standard confidential disclosure agreement

License Agreements

A license agreement gives you the ability to use WARF's rights under its intellectual property for a technology, in order to develop that technology for commercialization. WARF license agreements typically include the following elements:

License Fee

This fee is paid after the license agreement is signed. The fee amount depends on the market value of the technology.

Patent Reimbursement

These fees reflect the costs that are incurred to patent the technology. If foreign patents are sought for the technology, the fees may be higher to reflect this.

Development Period

When a technology needs to be developed over a period of time, WARF license agreements often provide for a development period. This means that before the license agreement is finalized, the licensee must submit a brief technology development plan. Thereafter, quarterly development reports are required. These reports help to document that active development of a technology is taking place, a requirement for licensing federally funded research. In projects with long development timetables, such as pharmaceuticals, certain progress milestones may be specified along with appropriate milestone payments. These help reduce initial license fees on high-risk projects since these milestone payments are only made if development continues successfully.

Royalties

These fees are paid when products using the technology are sold. They may be calculated on a percentage-of-sales or fee-per-unit basis, depending on the circumstances.

Minimum Royalty

At the end of the development period, if any, WARF expects a minimum royalty each year. This is set at a relatively low amount compared to the expected royalties. Any royalties actually earned offset the minimum royalty, so the minimum royalty is normally not an additional fee. These minimums are designed to encourage the continued active marketing of the technology.

Access WARF's standard non-exclusive license agreement

Option and Sponsor Option Agreements

These give the company the right to review a technology for a period of time to ascertain its practicality and value. During the option period, WARF agrees to keep open the availability of a license for the company reviewing this technology. A one-time fee is charged.

If the option agreement is for inventions that may be made during the course of UW–Madison research sponsored by your company, the agreement is called a sponsor option agreement.

Access WARF's standard sponsor option agreement

Materials Transfer Agreements

These permit biological materials and similar specimens owned by WARF to be transferred to researchers at other universities or companies.

Interinstitutional Agreements

These are special agreements between WARF and other universities, federal labs, nonprofit foundations and industry. These agreements permit WARF to offer clean license agreements when individuals from other organizations are co-inventors on a technology.