Technology Transfer & Commercialization Flashcards

A company licenses technology but the market shifts before launch. Which license clause best protects the licensor's interest in this scenario?

Answer: Diligence clause with performance milestones

Diligence clauses require licensees to meet development milestones, ensuring the licensor can reclaim or re-license IP if the licensee fails to actively commercialize it.

What distinguishes a 'know-how' license from a patent license in technology transfer?

Answer: Know-how licenses transfer proprietary technical knowledge not covered by patents, which may be harder to protect but often critical for implementation

Know-how encompasses trade secrets, methods, and expertise that complement patented technology and are often essential for a licensee to actually implement the invention.

Which of the following is a key challenge specific to commercializing platform technologies?

Answer: Identifying which specific applications to prioritize given that the technology enables many potential markets

Platform technologies' greatest commercialization challenge is market selection — the breadth of potential applications makes prioritization and resource allocation critical.

A technology spinout receives a Series A investment. How does this typically affect its relationship with the university licensor?

Answer: Milestone payments and royalty obligations continue; equity dilutes but the university's stake may be renegotiated

Series A funding doesn't void license terms; royalties and milestones remain active, though equity arrangements may be adjusted through negotiation as the company matures.

What is the main advantage of a non-exclusive license over an exclusive license for a university technology transfer office?

Answer: Non-exclusive licenses allow the technology to be commercialized across multiple companies simultaneously, broadening societal impact

Non-exclusive licensing enables multiple companies to develop products based on the technology, increasing its overall societal and economic impact.

In the context of tech transfer, what is a 'march-in right'?

Answer: The right of the federal government to require licensing of a federally funded invention to others if the original licensee fails to commercialize it adequately

March-in rights under the Bayh-Dole Act give the U.S. government authority to license federally funded IP to third parties when the current licensee isn't meeting commercialization obligations.

Which stage of the Stage-Gate process is most directly tied to technology transfer decision-making?

Answer: Stage 1 (Scoping) and Gate 2 (Second Screen), where technical and commercial feasibility are assessed

Early Stage-Gate phases evaluate whether external technology should be licensed in or whether internal IP should be transferred out, making them critical transfer decision points.