Licensing

Licensing agreements give permission to other parties to use and exploit intellectual property. They apply to both existing companies and start-up companies.

HKU may license the technology or invention to an external partner(s) to continue developing the product either on their own or in collaboration with HKU. HKU license agreements usually stipulate that the licensee(s) should seek to bring the intellectual property into commercial use for the public good, and provide a reasonable return to the University.

Finding a licensee:
The TTO uses many sources and strategies to identify potential licensees and market inventions, such as existing relationships, market research, examining other complementary technologies, and faculty publications and presentations.

Inventor(s) involvement in the marketing stage is very important too as research and consulting relationships can be a valuable source of licensees.

Licensing procedures with industry:
A licensee is chosen based on the potential to commercialise the technology for the benefit of the general public. This can be an established company or a start-up. Versitech handles licenses and looks for prospective licensees that have:

• knowledge of the addressed applications and access to markets
• financial and other resources
• a solid plan and demonstrated commitment to bringing technology to the marketplace.

Commercial partners may be given information to assist their evaluation. In general, they will need to sign a Non-Disclosure Agreement as the initial step to obtaining additional and confidential information.

Commercial partner(s) that are approved to license HKU technology will sign a licensing agreement. This is an agreement with the University in which HKU’s rights to a technology are licensed without relinquishing ownership.

Role of the inventor(s):
Many licensees require the active assistance of the inventor to facilitate their commercialisation efforts, at least in the early stages of development. This can range from infrequent contacts to a more formal consulting relationship. Working with a start-up usually requires substantially more time.