Preparing to License IP
If you are an investigator or company interested in licensing intellectual property from UNC-Chapel Hill, please refer to the following frequently asked questions, which will help guide you through the process.
University intellectual property (IP) is managed by commercialization managers within the Office of Technology Commercialization. Contact a commercialization manager to discuss next steps for engagement. If the company wants to speak with you and you are unfamiliar with their R&D programs, a good first step is to schedule a call or meeting that is limited to an exchange of public information (exclude unpublished results or information). If there is significant subject matter overlap between your work and that of the company, entering into a confidential disclosure agreement (CDA) may be unwise until both parties are sure they want to move forward. The commercialization manager will arrange for a CDA when needed before disclosing unpublished information.
Options or licenses for University IP can only be negotiated by the commercialization manager managing the IP as part of the Office of Technology Commercialization (OTC). The Carolina Express License Agreement (CELA) may be available to startup companies founded by University employees. Use of the CELA must be approved by the OTC team on a case-by-case basis upon review and approval of the startup’s CELA-written application for a license and may be precluded in certain situations. The startup company is not required to use the CELA. Your company representative and the commercialization manager will discuss whether the CELA is the most appropriate agreement, if an alternate agreement is more appropriate, or if you wish to start with an option instead of a license.
If there is no non-University representative for the startup company, University employees may be allowed to represent their startup company while negotiating the license agreement or after the agreement is executed, provided they adhere to strict management guidelines and are be excluded from all University discussions regarding the license.
University IP is managed by commercialization managers within the Office of Technology Commercialization (OTC). Most of the IP that is currently available is listed on our website. OTC provides links to all public information (published papers and patent applications) for your review.
Some IP is not yet ready for publication, so please contact the commercialization manager in your area of interest for additional information. The commercialization manager will arrange for a confidential disclosure agreement (CDA) if needed before disclosing further information.
Yes, the commercialization manager will work with you to engage with the investigators who created the IP if you have not already engaged with them directly. To connect with the commercialization manager for the IP that you’re interested in, please send an email request to otc@unc.edu. The commercialization manager will respond and help you identify the IP and the company’s interest.
If you are not sure about the IP, or if you are concerned about subject matter overlap with company programs, a good first step is to schedule a call or meeting that is limited to an exchange of public information. If you want to engage further, the commercialization manager can arrange for a confidential disclosure agreement (CDA).
Information shared under CDA can only be used by the company for the purpose of determining the company’s interest in licensing the IP. A CDA is time limited and not a means to obtain research information to be used by a licensee for R&D.
Both options and licenses are available. The option or license can only be negotiated by the commercialization manager in the Office of Technology Commercialization. Agreement terms cannot be negotiated by anyone else at the University, including the investigators who developed the IP.
An option may be obtained for a year or less (longer options may be available if arising out of research sponsored by the company taking the option). An option fee and patent costs will be paid by the company during the option period.
Where available, a nonexclusive license can be completed with a simple agreement and payment of the negotiated fee(s).
For an exclusive license, the commercialization manager will need information about the proposed product to be developed before negotiating the license. In addition to payment of the negotiated fee(s) and patent costs, all exclusive licenses must include development milestones through first commercial sale (we want to ensure the IP is developed and not set aside for later development or anticompetitive purposes).
Startup companies or companies with no demonstrated experience in the subject matter of the IP should expect to provide information demonstrating sufficient resources to meet the terms of the license. The University does not routinely take equity in lieu of license fees from startups not founded by a University employee, but we will consider it on a case-by-case basis.
The Carolina Express License Agreement (CELA) may be available to startup companies founded by University employees. Use of the CELA must be approved by the Office of Technology Commercialization team on a case-by-case basis upon review and approval of the startup’s CELA written application for a license, and it may be precluded in certain situations. The startup company is not required to use the CELA. Your company representative and a commercialization manager will discuss whether the CELA is the most appropriate agreement, if an alternate agreement is more appropriate, or if you wish to start with an option instead of a license. If there is no non-University representative for the startup company, University employees may be allowed to represent their startup company while negotiating the license agreement or after the agreement is executed, provided they adhere to strict management guidelines and are excluded from all University discussions regarding license matters.