The Catholic University of America

Patent Licensing Information

Technology Licensing

Technology licensing involves the transfer of technological discoveries from a research laboratory to the commercial marketplace. Technology transfer can occur in many forms. It may be as simple as a phone call, or as complex as the formation of a new company.

The Office of Technology Transfer makes Catholic University of America research available to business, industry, and the public by helping to determine the best way to introduce university research to commercial entities. This is accomplished through licensing of research technology. This office negotiates the terms of the license, including reasonable royalties and other fees, for use in furthering CUA's educational and research goals. The OTT works with the researcher throughout the process to determine the best commercial partner.

Licensing is the most formal and legally enforceable form of technology transfer. A license is a written grant of rights by one party to another party for specific purposes. Technology may be licensed to an established company, a new company or another institution. For the purpose of technology transfer, the university (licensor) owning the technology (intellectual property) grants a company (licensee) the right to develop and/or commercialize the intellectual property. In order to commercialize a technology, the licensee will develop, manufacture and sell the product(s). In effect, the licensor is transferring the technology, or rights to the technology, to the licensee in return for financial consideration, which is most often a royalty payment based on the net sales.

A license can be granted exclusively, meaning the licensor may not grant to another party the same access to the intellectual property, or non-exclusively, meaning the licensor grants rights to other licensees. License agreements typically include up- front payments or licensee fees and royalties. Licensees are asked to underwrite the continued prosecution of the U.S. patent application and also the cost of foreign patent filings, which can be substantial over time.