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Research and Technology Transfer | Office of General Counsel

 

License Agreement Checklist

Patent, Technology and Software Licenses Conveying Rights in Board Intellectual Property

The Board has delegated to each institution's President the authority to sign license agreements on behalf of the Board, so long as those contracts conform to the requirements of the Office of General Counsel (OGC). OGC requires that each institution use this Checklist as part of the process of review and approval of license and option agreements. Please review the License Agreement Review Procedures before beginning.

 

Please check the boxes below if the answer to the question is YES.

 

Basic Contract Drafting Considerations

1. Did you begin with a standard or shell agreement in blank form, approved by the Office of General Counsel?

2. Did you or the licensee incorporate clauses from another agreement?

3. Did you or the licensee draft new clauses from scratch?

4. Does your draft contain clauses that seem irrelevant to this particular deal?

5. Does your contract have paragraphs that cross-reference other internal paragraphs?

6. Are you the only person in your department working on this agreement?

7. Does your agreement address the same issue in two or more places in slightly differing ways?

8. Does your transaction have an unusual background or history?

Intellectual Property, Policy and Guidelines Considerations

9. Is there anything unusual about the Board's ownership of the licensed intellectual property?

10. Does the transaction involve inventor or Board equity ownership or inventory business participation in the licensee?

11. Has the licensee asked the Board to warrant anything other than our standard warranties about good title and rights to grant the license?

12. Has the licensee asked the Board to indemnify it for anything?

13. Are you or the licensee substantially revising either of the following sections?

         Definitions

         License

14. Have you or the licensee removed or significantly impaired any of the following rights or obligations?

  • Reversion of rights for failure to commercialize
  • Reimbursement for all patent expenses
  • Full indemnification for U.T. System and component institution
  • Right to publish scientific findings
  • Obligation to maintain confidentiality of unpatented technology
  • Right to share in sublicensee revenues

15. Which, if any, of the following extenuating circumstances may interfere with documenting this transaction such that the document may not reasonably be expected to meet normal expectations?

     General time pressures (understaffing/workflow problems; requesting significant revisions late in process; pressure from other offices with related documents; pressure from licensee; date-sensitive technology)

 

      Fragile licensee relationship

 

     Faculty inventor unsupportive of efforts to conform documentation to normal expectations

 

     Little or no leverage with reluctant licensee

 

      Pressure to use an old agreement with the licensee to save time, even if the old agreement will not conform to current expectations ("They're used to seeing this language...")

 

      The agreement, even though not conforming to current expectations, was approved previously by OGC.

 

Describe the agreement, for your reference.

 

Please direct questions or comments regarding this page to BethLynn Maxwell.

 

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