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

In accordance with Regents' Rules and Regulations, the Board has delegated to each component institution's Chief Executive Officer the authority to execute license agreements on behalf of the Board, so long as they conform to any special requirements of the Office of General Counsel regarding its review. This Checklist process constitutes such a special requirement.

This procedure is designed to help you evaluate license and option agreements that convey to a third party an interest in Board intellectual property. Beginning with a standard agreement, you will not need to use the Checklist until you have received first revisions from your potential licensee unless you make significant revisions to the standard before first transmitting it to the potential licensee. In this latter case, you should use the Checklist to evaluate and modify your draft before sending it on. It is much more difficult to make changes late in the process.

Any time you use the Checklist, please print out a copy of the results and keep it in your file. It will be helpful in conferring with the Office of General Counsel and during processing of your agreement (Step Seven, below) when you will describe to your Chief Executive Officer or designee any deviations from normal expectations and the circumstances justifying approval nevertheless.

Step One

Review the License Checklist to become familiar with the problems you'll be looking for in your agreement.

Step Two

Read the license or option agreement, keeping these potential problems in mind.

Step Three

Note sections likely to need attention.

Step Four

Answer the questions in the Checklist based on your reading of the agreement and submit the Checklist for analysis.

Step Five

Carefully read the Checklist recommendations and integrate them as much as possible.

Step Six

Negotiate the changes with your potential licensee. The recommendations are based on general good contracting principles and specific guidelines from Regental Policy. None are unreasonable; all should be acceptable to most potential licensees.

Step Seven

If there are extenuating circumstances that might justify some deviation from normal expectations, it may be appropriate to accept agreement provisions that would ordinarily be unacceptable. As a rule, always try to obtain the licensee's agreement to terms that are recommended by the Checklist. If you do not feel that this is appropriate or the licensee refuses, please note the deviations from normal expectations in your transmittal letter to your Chief Executive Officer, along with those circumstances that justify his or her approval of the agreement on behalf of the Board of Regents despite the problems identified by the Office of General Counsel's License Checklist.

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License Checklist | Transmittal Form L
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Comments to Intellectual Property
intellectualproperty@utsystem.edu
Last updated: June 16, 2005