Common questions

UNB has an inventor-owned intellectual property policy. This means that the inventor has the choice to assign their invention to the university for commercialization, or pursue commercial opportunities themselves.  If a faculty member does choose to pursue commercialization themselves, they have an obligation to disclose the technology to ORS as part of the collective agreement [Article 38.04]. If higher than average funds have been used from UNB or as part of funding grant, intellectual property rights will need to be discussed.

When a UNB faculty member assigns their invention to the university, they benefit greatly from UNB’s Office of Research Services (ORS) marketing, intellectual property and licensing expertise. Researchers often participate in discussions with the company regarding the [technical aspects of the] technology; however, they generally do not participate in the negotiations of licensing agreements. In any case, they are kept up-to-date throughout the licensing process.

UNB does not give special treatment to inventor start-ups. However, ORS does work closely with the inventor in evaluating potential markets and licensees. UNB recognizes the need to involve the inventor in the transfer of their technology and strives to keep their best wishes in mind. When fielding potential partners, the best licensee is chosen based on their ability to commercialize the technology, whether it may be the inventor’s start-up or another company.

An option agreement provides a company an exclusive opportunity to negotiate a full license agreement, during a set period of time. Options are typically used in situations where the company would like to do further research to evaluate the technology prior to entering into a full license agreement.

Option agreements are sometimes preferred by start-ups so they can explore funding opportunities and raise capital.  ORS provides options on a case-by-case basis depending on the company’s capability and whether there is competing interest in the technology.

A license agreement on a UNB technology can be negotiated after due diligence is completed by ORS in terms of a market and commercialization assessment and the invention has been assigned to UNB. If the start-up is the ideal choice for commercialization then ORS will negotiate a license agreement with the company.

The time it takes to obtain a license varies depending on the technology, whether a patent is being pursued and the interest of other parties. It may take several months after the invention is disclosed and assigned to ORS for it to be fully evaluated [and for a patent to be filed, if applicable] to allow the negotiation process to begin.

These processes can be streamlined if the inventor contributes to preliminary assessments of the technology such as potential markets, potential licensees, patent claims, etc. Start-ups can take this time to develop the business to increase their viability as a potential licensee. Once ORS identifies the best licensee, whether it be the start-up or existing company, negotiations for a license agreement may take anywhere from several weeks to several months depending on whether both parties can agree to terms easily.

UNB can take a minority equity stake in a company as part of a license agreement. This is typically done with start-ups to help free up some of their limited cash flow, helping to sustain and grow the business. Negotiating an equity share is done on a case-by-case basis and varies depending on the state of the company and whether an exclusive agreement is being pursued.

Yes, becoming incorporated is not necessary for a company to obtain a license. However, an agreement must be with a company, not an individual, and must have a valid name, place of business, and business insurance.

UNB maintains the ability to use and continue to work on UNB assigned inventions for non-commercial research, education, and administrative purposes.

No, UNB will not transfer or assign IP rights to any start-up’ or company. After the market and commercialization potential has been assessed, UNB may negotiate an exclusive license agreement if the company is determined to be the best candidate.

If an inventor wishes to disclose or discuss their invention before a patent has been filed or publication released, a Non-Disclosure Agreement (NDA) should be in place to ensure confidentiality. An NDA prevents loss of patent rights from inadvertent disclosure. ORS can provide NDAs to inventors or their start-ups to facilitate open discussion between potential investors looking to evaluate the technology.

Yes, in this case a copyright license is negotiated with ORS.