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Express license used by DoD gets deals done at breakneck speed


By Jesse Schwartz
Published: December 4th, 2018

The only difference between the express license built by TechLink for the Department of Defense (DoD) and the form they previously used for licensing is that it is faster — much faster. “We are able to have fully executed licenses in 13 working days,” reports Austin Leach, PhD, CLP, TechLink’s associate director for defense programs.

And yet, Leach says, “the agreement itself is no different from the standard patent license agreement the Army or Navy uses. [It includes] all of the standard clauses of a conventional license agreement; it is not shortened or unsophisticated.” (TechLink, a center within Montana State University’s Office of Research and Economic Development, is a DoD partnership intermediary that specializes in marketing and licensing DoD technology to the commercial industry.)

Joseph Gordon, the Air Force’s tech transfer & transition director, confirms that deals are getting done without sacrificing a fully fleshed out agreement. “All terms from a standard Air Force patent license agreement are included,” he says. “We use common royalty terms, but the government never takes an equity position.”

So where does the speed come from? “Some express licenses are no-cost, some are simplified,” Leach observes. “For DoD, [the speed comes from] moving the process online.”

The application process is also online, and once completed it is used to populate the license agreement, he explains. “The system itself auto-populates the agreements,” he says.

The U.S. government requires that applicants submit a commercialization plan, he continues. “The questions asked online are the components, so once applicants submit a formal application document – a PDF — we can be sure the applicant meets the requirements necessary for a lab to grant a license.”

“The TechLink system allows online application, document review, and facilitates communication with the applicant,” adds Gordon. “All the information we need to make a license grant determination is contained in one easily accessible, shared location.”

The other difference with the TechLink model, Leach says, is that DoD can offer more than just non-exclusive licenses. “They could be partially exclusive field of use or exclusive,” he says. “There are previously decided costs based on level.”

A detailed article on the TechLink express license appears in the November issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s entire 11-year archive of best practices and success strategies for TTOs, CLICK HERE.

The Streamline Your Agreements distance learning collection provides detailed guidance on “express” and “ready-to-sign” licensing programs that you can adapt for your own TTO. For complete details, CLICK HERE >>

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