In keeping with the knowledge mobilization path being followed, the UILO will work with researchers to determine the most effective way to license or otherwise disseminate UBC research outputs.

Broadly, research outputs may ultimately be mobilized through the following mechanisms:

• Exclusive and non-exclusive negotiated commercial licenses to existing companies
• Spin-off company creation
• Clickwrap licensing
• Submission to a patent pool or IP aggregation channel
• Non-proprietary distribution

Negotiated License Agreements

The UILO has a large amount of flexibility in how agreements that transfer the rights to a receptor company can be structured.  License agreements, which the transfer the right to use a technology to the receptor company without transferring ownership of the technology are typical but in appropriate circumstances the ownership of the technology can be transferred through an assignment agreement. The intellectual property that is the subject of the license typically falls under one or more patents, but it can be a know-how, trademark or, typically in the case of software, copyrighted material.

Different types of inventions lead to different licensing strategies: a basic scientific tool which could be used by everyone in the field is typically licensed on a non-exclusive basis; whereas an invention that requires extensive investment by the licensee to bring to market may be licensed exclusively. The UILO has developed a general license agreement that is modified as necessary for each invention and licensing situation. For instance, a small start-up company may not be able to afford initial large payments and may prefer an agreement that gives UBC an equity stake in the company and minimal payments until a product is on the market.

Because a license represents the beginning of a long-term relationship, the UILO strives to negotiate an agreement that satisfies all parties. A license agreement must reflect the complete understanding of the parties and set-out their rights and obligations. A license should use clear terms so that it can be interpreted by those who will be working under the conditions of the agreement, particularly since licenses often stay in effect for many years and the original negotiators may not be available to provide an interpretation.

There are numerous terms and conditions that may be used in a particular licensing situation.

Some of the key provisions of a UBC license agreement include:

• The scope, including exclusivity/non-exclusivity, field of use, and geographic range of the license
• Royalties or other considerations
• Performance requirements of the licensee
• Registering the license with the Personal Property Security Registry of British Columbia
• Confidentiality
• The rights of faculty inventors regarding publication
• Protecting UBC from liability
• Insurance held by the licensee
• Improvements to the subject of the license
• Payment of taxes
• Use of the UBC name

Licensing negotiations do not follow a set timetable. For many promising inventions, it may be years before a window of opportunity to commercial development opens.

In all of its licensing activities, UBC is mindful of following the global access principles established in 2007 to ensure developing world access to suitable UBC discoveries.