Student(s) may choose to assign their IP to the university. Before they do, they should meet with JHTV to ascertain whether the decision is of mutual interest. If it is, JHU bears the cost of patent protection and JHTV works on behalf of the inventors to license the technology and generate revenue.
By assigning the technology, students can also take advantage of certain additional resources made available through JHTV. For example, they can apply for additional translational funding. If they do not have a desire to remain involved in commercialization of the tech, but want it to have impact in the world, they can also access the support of JHTV’s licensing team in developing a commercialization strategy and attempting to license the technology to a third party. Students then become “inventors” under the IP policy, and receive any distributions from licensing revenue received by JHTV.
Other students choose to form a startup company based on the assigned technology. If they have assigned IP to the university, this now requires that the startup company they form license the technology “back” from JHU. As part of its standard startup license agreements, JHU typically seeks:
- Payment of ongoing patent expenses, and reimbursement of past patent expenses
- An upfront license fee
- An equity stake in the startup
- Royalties on sales, including Minimum Annual Royalties
- Milestone payments tied to continued technology development
JHU’s negotiating position will treat a student-assigned technology like any other in its portfolio, and the student-founded startup like any other outside entity seeking a license. Students in this scenario should understand the basic components of a license (legal terms, business terms) and related obligations (e.g. repay IP costs, royalties/MARs, milestone payments, equity stake); they should understand that specific legal terms and business terms consistent with peers, Finally, they should plan to have a lawyer involved in these negotiations.
- Advantages: By licensing the technology, the startup defrays the cost of patent protection and becomes a FastForward company, which makes it eligible to apply for subsidized lab/office space, secures access to venture capital fundraising assistance and qualifies it to receive pro bono services from sponsors.
- Concessions: In negotiating a license to the technology, JHU will seek to recoup the investment made in the patent and will negotiate licensing terms that incentivize development of the technology and seek economics on behalf of the inventors. In other words, the startup may give up economics in the long-term in exchange for JHU’s upfront investment in patent protection. For an early stage company, assistance with IP protection is valuable, but this may not make sense if the startup does not plan on accessing FastForward services or has other funding available.