Tech Transfer eNews Blog

‘Go-in-Peace’ license can help smooth feathers when returning IP to faculty

By Jesse Schwartz
Published: July 22nd, 2020

A detailed article on the use of “go-in-peace” licenses for return of IP rights to faculty appears in the July issue of Technology Transfer Tactics. For subscription information and to access the full article, along with 13+ years of archived best practices and success strategies for TTOs, click here.

When a TTO decides not to pursue an invention or patent it, the faculty inventor may want rights to the IP. But how to make that transfer can be a difficult proposition.

One approach used by some TTOs is the “go-in-peace” license, in which the university licenses the IP back to the faculty member who wants to pursue commercialization. Terms are typically simplified, with a minimal or no upfront and a small royalty if the IP ever makes it to the marketplace.

The license is most appropriate when there has been no patent yet, says Daniel Catron, executive director at Allele Biotechnology & Pharmaceuticals in San Diego, CA. He previously served as executive director of the TTO at the Scintillon Institute in San Diego. Prior to that he worked in tech transfer at the Scripps Research Institute and the University of Miami, and he used the go-in-peace license at both.

“The go-in-peace license has minimal terms because we put in minimal work. We give them the market analysis and a license template,” Catron says. “We tell them to take that and go to work on their ideas.”

The typical terms of a go-in-peace license, Catron says, are in the ballpark of $1,000 up front and a 1% royalty if no patents have been filed. Those terms can be scaled to cover the TTO’s prior investments, such as recovery of patent costs. The costs in the license might also escalate if the faculty inventor decides to get attorneys involved in negotiations, he says.

Catron began to see the appeal of this type of license in his previous TTO positions. “We were getting a lot of disclosures in that were not cutting the mustard, didn’t have enough enabling data to support a patent,” Catron says. “We wanted to get away from the faculty’s assumption that if they gave us a disclosure and we didn’t act on it, they wanted to have it back immediately. There’s always that chorus of ‘release to us now!’”

Before adopting the go-in-peace license, the TTO would respond to faculty requests for return of their IP rights by issuing a release letter with terms the inventors had agreed to as part of their employment, but the faculty would say they could not afford the royalty rate of 5% to 20% of top line revenue, not just net sales, Catron says.

“They would be up in arms about how they can’t afford this, but my hands were tied. That was the release letter they agreed to and I couldn’t go back and renegotiate release letters,” Catron says. “So I said why not just do away with the whole thing? MIT had come up with this idea of the [go-in-peace] license for faculty, and since they practically invented tech transfer we figured they knew what they were doing.”

Catron implemented the idea at the University of Miami and found that it spurred faculty to provide more disclosures. “Release letters said the technology was released as it was disclosed at that point, and that’s it. But if it’s going to be licensed out to someone, they want to make sure they cram as much as they possibly can into that, so that they get as much out of the license as they can,” Catron explains. “The go-in-peace license makes sure that the disclosures you get are fully realized, with all the enabling data, and [faculty] can take a real license to a potential backer.”

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