Tech Transfer Central

New Models and Best Practices in Express-Style Licensing

Format: On-Demand Video/Transcript, or DVD
Originally presented: Thursday, April 21, 2022
Price: $197
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“Express” licenses have become a widely used tool in tech transfer, with a wide range of models all seeking the same goal: standardizing agreement terms to dramatically speed licensing and start-up formation. These quick agreements provide a transparent, streamlined pathway for faculty start-ups — and in some cases outside companies — to gain access to promising technologies with less hassle, greater efficiency for the TTO, and attractive terms.

Since first being introduced, these express-style licensing programs have been massaged, tweaked, improved and tested with a wide variety of configurations, structures, and licensee terms and requirements – and some clear winners and best practices have emerged.  

This one-hour session features a detailed look at three best-in-class express licensing programs: The University at Buffalo EXL, The University of Cincinnati Express License/Option, and The University of Georgia’s Industry Express and Georgia Start Up License. In this strategy-filled session, the tech transfer leaders using these models will each focus on their programs’ licensing philosophy, criteria, terms, process, and results. They’ll also discuss best practices for drafting express licenses, as well as the incentives, benefits, and drawbacks for both your TTO and your licensees.

Read on for details you’ll learn about each program.

Express-Style Licensing

Featured licensing programs in this session:

1. The University at Buffalo EXL

The University at Buffalo’s EXL license is part of a process developed to assist faculty members in creating start-up companies. It is a non-negotiable agreement with business-friendly terms, and requires contributions from many stakeholders.  When completed, the start-up is better informed, resourced, and connected than start-ups using a traditional license negotiation. 

Program agenda:

  • The evolution of the EXL Express License
  • Details of the EXL license terms, criteria for eligibility, and the process
  • The goals of EXL License:
    • Create an efficient, trusted start-up process
    • Educate faculty founders
    • Conserve start-up resources
    • Integrate the start-up into UB’s entrepreneurial ecosystem

2. University of Cincinnati Express License/Option Program

The UC has been on a five-year journey to build an innovation district in Cincinnati, to spearhead the Ohio IP Promise and to make the University of Cincinnati a real go-to place for technology innovation. A big part of that effort is its express license/option program, and how it interacts with their Venture Lab and Maker Space to create a seamless, quick process for faculty and other entrepreneurs to license technology and build their companies.

Program agenda:

  • The Express Licensing/Option Program:
    • Who is eligible
    • Licenses vs. Options
    • Upfront Costs
    • Success Fee vs. Equity
  • Overview of Cincinnati Innovation District
  • Ohio IP Promise:
    • IP Tiers
    • How the Express Licensing/Option program fits in

3. The University of Georgia Industry Express Start Up License

The University of Georgia (UGA), through Innovation Gateway, is committed to streamlining the agreement negotiation process for both industry partners and for entrepreneurs that want to start companies based on university-developed technology.

For the past several years, UGA has utilized an express licensing program, Industry Express, for industry-sponsored research projects. More recently, it developed and introduced an express start-up licensing program called the Georgia Startup License (GSL). This program aims to better position UGA startup companies for success by providing expert business opportunity assessments and mentoring, while also offering preferred option and licensing terms, discounted incubator lease rates, and priority support services.

Recognizing the unique challenges that startup companies face, this program provides a framework in two phases to maximize a start-up’s likelihood of success and enhance its ability to attract substantive external investment, while unlocking access to express agreements and preferred terms at each phase.

Program agenda:

  • Why is another express license needed?
  • Advantages/Disadvantages of GSL
  • How the program phases work
  • Preferred terms

Meet the panel:

Michael FowlerMichael Fowler, PhD
Commercialization Manager
University at Buffalo

Dr. Fowler joined the tech transfer office In 2005, where he continues to work at transitioning academic ideas into useful products.

He earned a doctorate in cell and molecular biology from University at Buffalo’s Roswell Park Cancer Institute, and then served as a postdoctoral fellow for the University at Michigan and Parke-Davis Pharmaceutical Research in Ann Arbor, MI. He continued a research career as a research assistant professor for the University of Rochester before becoming the life sciences marketing manager for Schleicher & Schuell Bioscience in New Hampshire. He returned to Buffalo as a product manager in the Cell Culture Division of Life Technologies before joining UB.

Jill E UhlJill E. Uhl
Senior Licensing Associate
University of Cincinnati

Ms. Uhl has more than 25 years of experience in a broad range of intellectual property issues. She has practiced law in an IP boutique and in a large general practice law firm (Chicago’s Marshal Gerstein and Boston’s Hale and Dorr), as Chief U.S. Patent Counsel for an international pharmaceutical company, and has spent 15 years working in academic technology transfer at Arizona State, Johns Hopkins and now at the University of Cincinnati. Jill is a registered patent attorney licensed in Illinois and Massachusetts.

Cory AcuffCory Acuff, PhD
Sr. Associate Director
Innovation Gateway-University of Georgia

Dr. Acuff has twenty years of experience in the field of academic technology transfer and biotech business development. In that time, he has developed many highly regarded and innovative technology commercialization strategies and faculty outreach practices for technologies predominately in the life science sector. This activity has focused on creating high value business practices in the academic environment that enhance technology value and marketability. Dr. Acuff has been very active in giving back to the academic licensing community through the training and development of more than 50 young technology professionals. He is also active in supporting the advancement academic technology transfer globally though his involvement in AUTM.

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