presented by: angela hodge july 2010 the university of texas at austin office of technology...
TRANSCRIPT
PRESENTED BY:
ANGELA HODGE
JULY 2010
The University of Texas at Austin
Office of Technology Commercialization (OTC)
The mission of UT Austin is to achieve excellence in the interrelated areas
of undergraduate education, graduate education, research, and public
service. UT Austin is a leader in research:
$596 million annual research revenues (FY09) UT Austin Office of Technology Commercialization:
promotes and accelerates commercial investment in promising UT Austin technologies for the benefit of society and the world
establishes and maintains strategic relationships with industry to enhance UT Austin’s research enterprise and commercialization efforts
contributes to economic development in Texas and beyond enhances UT Austin’s ability to attract and retain world-class
faculty
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THE UNIVERSITY OF TEXAS AT AUSTIN
Templates enable UT Austin OTC to maintain consistency and
provide a starting point for negotiations Patent License Agreement (PLA) Patent and Technology License Agreement (PTLA) Software License Agreement (SLA) Inter-institutional Agreement (IIA)
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Templates and Their Role at the University of Texas at Austin
Goal: To implement efficient processes that increase
collections and mandatory reporting
Concerns: Need adequate funding and manpower to be
effective
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Goals and Concerns
Licensing Compliance Process
©2010, Office of Technology Commercialization
3rd
PartyTriage
3rd
PartyTriage
Synopsis ofActive/inactive
Licenses
Synopsis ofActive/inactive
Licenses
Legal & Financial
Experts
Legal & Financial
Experts
Contact Licensee
Contact Licensee
RequestDelinquent
Reports
RequestDelinquent
Reports
Active or Terminated
License
Active or Terminated
License
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Options you may want to consider: Third-party triage Desk audits (intermittent, trained by outside
vendor) Payment Calendar (updated upon license,
amendment,
option execution) Customized agreements database (W-I-P) Request delinquent reports (quarterly)
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What We Have Tried
Third-Party Triage (start of the process): Outsourced license review of all active and inactive
licenses to a firm with legal and financial expertise Goal – identify status of entity, status of license,
rights granted, breakdown of financial terms, reporting requirements, audit rights, and obtain current contact information
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What We Have Tried
Steps include: Correspond with licensees – reference agreement,
reporting requirements, request updated contact information, and send blank royalty report and your payment information
Communicate a zero reporting requirement Move licenses from inactive to either active or
terminate and retrieve IP
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Different Phases of the Process
Improvements include: Billing for licensee fees and milestones –
documented on Payment Calendar Implemented an automated royalty report
submission process using an e-signature program that is setup to sent reminders
Initiated a process for Inter-institutional Agreements and inventor assignments
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Improvements to Process
Results include: Frequency of reporting has increased Number of payees has increased More diverse royalty revenue stream
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Results
Licensee compliance issues Do you think licensee may be underreporting?
Enforce audit rights prior to expiration
Based upon the amount of revenue received Are the top licensees paying correctly? (Top 10%)
Due to cost of external audits, you must do a cost benefit analysis prior to engaging a firm
Royalty monetization requests
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Which License Agreements Should be Audited and Why
Before inking the deal – reviewing the document for potential future non-compliance issues:
Ensure the agreement TERMS enforceable? Determine if you could you provide the requested information Request QUARTERLY reports from all licensees whenever possible (my
preference is zero reporting) Stand firm with regard to obtaining your AUDIT RIGHTS
After the deal is signed : Just START even if the entire process is not completely mapped out RECORD all potential payments in one repository Contact your LICENSEES Stay in touch with INVENTORS – often they can keep you informed about the
industry Conduct DESK AUDITS; review financial information from multiple sources Resolve MANPOWER issues by hiring students (pay or college credit) &
AUTOMATE your processes Enforce your AUDIT RIGHTS ©2010, Office of Technology Commercialization 12
How to perform ongoing license reviews