1. What is technology transfer?
2. What is knowledge transfer?
3. How is technology transferred?
4. What are the typical steps in the technology transfer process?
5. What is the KTO@Skoltech and what is its role in the technology transfer process?
6. Why would a researcher want to participate in the technology transfer and commercialization process?
7. What is a result of intellectual activity (RIA)?
8. What is intellectual property (IP)?
9. What is the definition of an author of the RIA, and who determines this?
10. What is the author’s role during technology commercialization?
11. How long does the technology commercialization process take?
12. What are the typical time frames for the technology transfer process steps?
13. What is a Technology Disclosure (TD)?
14. Why should I submit a Technology Disclosure?
15. How do I submit a Technology Disclosure?
16. Will I be able to publish the results of my research and still protect the commercial value of my intellectual property?
17. Will I be able to share material, research tools or intellectual property with others to further their research?
18. At what stages should the MTAs be signed?
19. What rights does a research sponsor have to any discoveries associated with my research?
20. How do I know if my research result / discovery is an invention? When should I submit a Technology Disclosure?
21. Whom should I list on my Technology Disclosure?
22. How does the KTO assess Technology Disclosure?
23. If I wish that all technologies be licensed nonexclusively to all potential users for the public good, will Skoltech honor my request?
24. Is an invention ever reassigned to the author?
25. What is the patenting process?
26. Who is responsible for patenting?
27. Is there such a thing as international patent?
28. Who decides what gets protected?
29. What does “state of the art” or “prior art” mean?
30. What does “inventive step” or “non-obviousness” mean?
31. What does it cost to file for and obtain a patent?
32. What if I created the RIA with someone from another institution or company?
33. Will Skoltech initiate or continue patenting activity without an identified licensee?
34. Is there an IP plan and budget at Skoltech? Should I keep the KTO aware of my research plans?
35. What is a start-up and why choose to create one?
36. Who decides whether to form a start-up?
37. What is the role of the KTO in forming a start-up?
38. Can the technology be licensed to a start-up exclusively or nonexclusively?
39. Should the start-up pay licensing fees and royalties?
40. How will the Knowledge Transfer Office market my technology?
41. How are most licensees found?
42. How long does it take to find a potential licensee?
43. How can I assist in marketing my technology?
44. When can I start the technology marketing process?
45. What documents are usually necessary to communicate with potential licensees during the technology marketing process?
46. What is a license (License Agreement)?
47. Can there be more than one licensee?
48. How is a licensee chosen?
49. What can I expect to gain if my technology is licensed?
50. What is the relationship between an author and a licensee during technology commercialization, and how much of the author’s time and effort will it require?
51. What other types of agreements and considerations apply to tech transfer?
52. What activities occur during technology commercialization?
53. What revenues are generated for Skoltech if commercialization is successful?
54. What will happen to my technology if the licensee is unsuccessful? Can the technology be licensed to another entity?
55. How are license revenues distributed?
56. What are the tax implications of any revenues I receive from Skoltech?
57. How are the revenues distributed if there are multiple authors in a licensed technology?
58. If I have assigned my IP rights to a Skoltech research partner and I am a co-author, will I receive licensing revenues?
59. What if I receive equity from a company?
60. How is equity distributed?

 

1. What is technology transfer?

Technology transfer is the movement of skills, knowledge, technologies, discoveries, methods of manufacturing, samples of manufacturing and facilities from developers to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services for the benefit of the general public. It can occur through publications, educated students entering the workforce, exchanges at conferences, and relationships with industry. For the purposes of this guide, technology transfer refers to the formal licensing of technology, under the guidance of professionals employed by universities, research foundations and businesses, in departments focused on these activities.

Technology transfer combined with efforts connected with technology implementation in new products or services, and bringing such product or service to the market comprise the technology commercialization process.

Technology transfer is closely related to (and may arguably be considered a subset of) knowledge transfer.

 

2. What is knowledge transfer?

Knowledge transfer is the process of transferring information from one party to another, either within an organization or between organizations. Knowledge transfer seeks to organize, create, capture and distribute knowledge and ensure its availability for new users.

 

3. How is technology transferred?

Technology is transferred by securing legal protection for IP and then licensing it to established companies or to start-ups (Skoltech spin-offs). The author’s active participation is usually important to the overall success of the technology transfer process.

 

4. What are the typical steps in the technology transfer process?

The typical steps in the technology transfer process are represented in the diagram below.

5. What is the KTO@Skoltech and what is its role in the technology transfer process?

The KTO@Skoltech is the office within Skoltech that is charged with providing intellectual property protection, management and licensing services. This includes assessment of results of intellectual activity, making decisions regarding legal protection and the use of results of intellectual activity, as well as exploitation of the intellectual property through the execution of License Agreements. The specific functions and role of the KTO@Skoltech are listed and described on the KTO web-site.

6. Why would a researcher want to participate in the technology transfer and commercialization process?

Each researcher is unique, but the reasons generally include but not limited to:

• Make a positive impact on society
• Feel a sense of personal fulfillment
• Achieve recognition and financial reward
• Generate additional funding for the researcher’s department or center
• Meet the obligations of a research contract
• Attract research sponsors
• Create educational opportunities for students
• Link students to future job opportunities

 

 

7. What is a result of intellectual activity (RIA)?

Result of intellectual activity is a legal term which refers to an intangible product developed by the creative effort of one or several individuals and that can be used commercially.

RIAs that are granted legal protection include: inventions; utility models; industrial designs; works of science, literature and art; computer programs; databases; performances; phonograms; radio, or television broadcasts or transmission via cable; utility models; industrial designs; selection attainments (plant varieties and animal breeds); topologies of integrated circuits; and know-how.

The types of results of intellectual activities that Skoltech will protect and commercialize include inventions, utility models, and software copyrights.

 

8. What is intellectual property (IP)?

Intellectual property is a broader term than RIA and covers both RIA and means of individualization (MoI). The MoIs that are granted legal protection include trademarks, service marks, appellations of origin and commercial names. The main difference between a RIA and a MoI is that the latter is not developed by the creative effort of individuals and, thus, does not imply authorship.

The types of means of individualization that Skoltech owns and is ready to offer for licensing are the Skoltech’s trademarks.

 

9. What is the definition of an author of RIA, and who determines this?

In accordance with the Civil Code of the Russian Federation, an author of the RIA is the person by whose creative labor such result has been created. Only those who made significant intellectual and creative contribution to at least a part of the RIA may be considered an author of the RIA.

 

10. What is the author’s role during technology commercialization?

The author’s role during technology commercialization varies depending on his/her interest and involvement, and the interest of the licensee in utilizing the technology for various assignments. Obligations and responsibilities to the sponsor will also affect the author’s degree of participation in this process.

 

11. How long does the technology commercialization process take?

The process of protecting the technology and finding the right licensee may take months or even years. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, the amount of work needed to bring a new concept to market-ready status, and the resources and interest of the licensees and the authors.

 

12. What are the typical time frames for the technology transfer process steps?

• Technology Disclosure preparation – 1 day to several months;
• Communication with the Principal Investigator (PI) during the technology evaluation process – 1 day to several months;
• Patent application preparation (with patent attorney participation) – normally 2-6 weeks;
• Patent filing (patent attorney’s responsibility) – normally 1-2 weeks;
• Patent marketing – up to 3 years;
• License negotiation – 1-3 months (normally includes 2-3 meetings);
• License Agreement signing – normally 1-2 weeks.

 

13. What is a Technology Disclosure (TD)?

A Technology Disclosure is a document describing a result of intellectual activity in sufficient detail and with sufficient data to enable the KTO to evaluate it for patentability and/or commercial potential. The Technology Disclosure also identifies the author(s) (full names, nature of participation in the creation of the result of intellectual activity), the authors’ home organization, the relationship of each author to his or her respective home organization, the authors’ places of residence at the time of creation, and the authors’ location (country) at the time such result of intellectual activity was created.

 

14. Why should I submit a Technology Disclosure?

The TD is submitted to the KTO@Skoltech in order for the KTO to assess the technology and determine whether it has commercial potential. If the technology is deemed commercially attractive, the KTO@Skoltech will arrange for the technology patenting process and will work with the author(s) to market the technology to potential licensees.

 

15. How do I submit a Technology Disclosure?

A Technology Disclosure is submitted to the KTO by two alternative ways – either via an Online Technology Disclosure Form or in a hard copy. For more information please refer to the following web-page of the KTO web-site. It is strongly recommended that the author(s) contact the KTO@Skoltech prior to submitting a Technology Disclosure.

 

16. Will I be able to publish results of my research and still protect commercial value of my intellectual property?

Any publication or verbal public disclosure which describes RIA prior to patenting may preclude obtaining patents in different countries. It is especially true for Russia, where the authors have to prove that publication occurred unintentionally so that it would be possible for them to take advantage of a 6-month grace period provided by the Russion legislation in order to protect the published data. Thus, the implications of publication upon patent rights should be discussed with the KTO as soon as there is a plan to publish your data so that a decision on patent filing can be reached promptly, and so that such publication will not be delayed.

 

17. Will I be able to share material, research tools or intellectual property with others to further their research?

Yes, you can share these but such transfer should be legally documented by signing an appropriate type of an agreement, such as a Material Transfer Agreement (MTA), a Non-Disclosure Agreement (NDA), etc. The documents should include the conditions of use of said materials, research tools or intellectual property. Please contact the KTO to assist you in completing these documents.

 

18. At what stages should MTAs be signed?

MTAs are usually signed in the following situations:

• Upon license negotiation – to provide the potential licensee with tangible evidence of technology potential;
• Upon negotiating the research contract. Both the sponsor and the researcher can provide samples to each other within such agreements.

 

19. What rights does a research sponsor have to any discoveries associated with my research?

Agreements with research sponsors provide that exclusive (ownership) right to results of intellectual activities created by Skoltech employees are assigned to Skoltech. The Sponsor gets a pre-emptive time-limited right to choose among the following options:

a) a nonexclusive royalty-free license;

b) a royalty-bearing license.

However, the sponsor is obligated to reimburse to Skoltech the patent prosecution expenses, such as patent filing and patent maintenance fees, in any country where the license has been granted to the sponsor.

 

20. How do I know if my research result / discovery is an invention? When should I submit a Technology Disclosure?

In most cases it is critical that the technology transfer not be delayed. You are encouraged to contact the KTO as soon as possible to discuss patentability and commercial potential of your discovery which you think may solve a significant problem and/or may have a significant commercial value. The KTO members will be happy to assist you in the assessment of commercial potential of your research results. The KTO can also advise you on alternatives to patenting and licensing.

 

21. Whom should I list on my Technology Disclosure?

The Technology Disclosure is a document prepared in accordance with the approved template and which contains information about the technology, the authors, and the sponsor(s) of research.

The Technology Disclosure should contain information about the individuals (authors) who made an intellectual contribution to the creation of at least a part of the RIA. The Technology Disclosure should NOT contain individuals whose contribution was not creative (such as those who provided measurements, helped with writing reports and TD, supervisors, administrative workers, etc.).

 

22. How does the KTO assess Technology Disclosures?

There are several steps in the technology assessment process.

One of the steps is to assess commercial potential. It is a collaborative effort of the author and the KTO to demonstrate that the technology provides a competitive advantage to a potential licensee and will create a reason for him/her to invest money in commercializing the technology. As a result, a decision will be made (in some cases, with the support of external experts) regarding whether the technology is commercially attractive, if it addresses the Skoltech mission, and whether it is worth allocating resources for its patenting. If no considerable advantage is provided for potential licensees or for Skoltech’s research mission, the KTO may decline to apply for a patent and to help commercialize the technology. In this case, ownership rights to the RIA can be waived in favor of the author.

Another step is to determine whether the technology is patentable. This process is also a matter of collaborative effort between the author and the KTO. However, the author should make a preliminary prior art search before submitting a Technology Disclosure to the KTO. If no relevant prior art is found, the patent attorney engaged by the KTO and assigned to prepare a patent application for a particular RIA will assume responsibility for this process.

 

23. If I wish that all technologies be licensed nonexclusively to all potential users for the public good, will Skoltech honor my request?

In a number of situations, a particular technology can be effectively brought to market and, thus, provide more benefit for the general public if licensed exclusively rather than nonexclusively. The KTO will consider each Technology Disclosure from this point of view while taking into account the authors’ commercialization wishes, the objectives of co-authors and any obligations to sponsors or other third parties.

 

24. Is an invention ever reassigned to the author?

Skoltech will keep ownership of inventions to meet its obligations toward the sponsor and to advance the mission of Skoltech. In other situations Skoltech may reassign ownership to the authors.

 

25. What is the patenting process?

The patenting process consists of the following stages:

• Patent drafting: Drafting a patent application together with a patent attorney;
• Patent prosecution: Within about a year the patent attorney should receive a response from the patenting office as to whether the patent application claims are acceptable. On receiving this response, if needed, the author and the patent attorney work together to amend the patent application so that it becomes patentable;
• Patent issuance: the patent office issues a patent;

The stages of the patenting process mentioned above are similar for various countries where the patent is filed.

 

26. Who is responsible for patenting?

The KTO@Skoltech will engage an external patent attorney selected specifically with respect to the particular RIA. This attorney will work together with the authors in drafting the patent application and responding to the patent offices in the countries where the patents are filed.

 

27. Is there such a thing as international patent?

There is no such thing as international patent. Patents are only valid in specific countries and can be filed in selected countries only. An alternative to filing a patent on a country-by-country basis is a PCT (Patent Cooperation Treaty) procedure, sometimes called international patent application. PCT is a convenient tool; it establishes a streamlined filing and processing procedure for worldwide patenting. The KTO@Skoltech, at its own discretion and in accordance with licensee’s request, will decide whether the patent application should be filed on a nation-by-nation basis or by standard PCT procedure.

Filing patents according to the standard PCT procedure provides the following benefits:

• A 30-month grace period is given to select the countries where the patents should be issued, in contrast to the 12-month period provided by the Russian legislation for filing an international application based on the national application. This allows to delay selection of countries where the invention will be protected, and have more time for searching potential licensees and negotiation of license agreements with them.
• It is simpler and more convenient to file one patent application instead of many applications in different countries;
• Payments and fees associated with PCT filings are lower than the fees required for filing in all the separate patent offices in several countries of interest.
• The PCT procedure will delay patent prosecution payments related to filing in each country.
• According to PCT regulations, the international search report (ISR) must be provided to the applicant not later than 9 months after filing of the patent application. It allows to reduce financial and business risks of non-patentability of the filed invention both for Skoltech and for the potential licensee before significant resources are spent on national filings and licensee’s investments in commercialization of the licensed technology.

 

28. Who decides what gets protected?

According to the patent legislation of Russia and other countries, an invention is patentable if it conforms to the following criteria:

• It is novel (is not part of the prior art or state of the art);
• It can be applied to industry (“usefulness”);
• It involves an inventive step (“non-obviousness”).

The author and the KTO collectively discuss and decide whether to file a patent. Ultimately, the KTO makes the final filing decision.

 

29. What does “state of the art” or “prior art” mean?

State of the art or prior art with respect to an invention, utility model or industrial design means any information and data that became public domain anywhere in the world before the priority date of such an invention, utility model or industrial design. Such data may include published articles, presentations, reports, published patents and patent applications, etc. It should be noted that unpublished or confidential information is not included in the prior art.

 

30. What does “inventive step” or “non-obviousness” mean?

Inventive step, also known as non-obviousness, is one of the invention patentability criteria. An invention is not obvious (contains an inventive step) if it does not obviously follow from the prior art for a person skilled in the field of invention. Invention does not contain an inventive step if it was obtained as a result of addition, substitution, exclusion, multiplication and other similar trivial operations with known elements and parameters in a product or a process by known methods and rules, and if the result of such operations is obvious for a person skilled in the art. An invention is also considered obvious if it concludes in making known device or its part out of known material in order to achieve an expected technical result conditioned by known properties of the material.

Generally, checking an invention for an inventive step is not an easy task. The KTO is willing to support Skoltech community with identification of patentable inventions resulted out of their research work.

 

31. What does it cost to file for and obtain a patent?

The patent prosecution process is divided into three main steps: patent application drafting, patent filing, and negotiation of claims with the patent examiner. In the first step the author together with a patent attorney prepare the patent application. This usually costs 3 000 – 15 000 USD depending on various factors (number of claims, necessity of prior art search, etc.). In the second step the patent filing fee should be paid to the patent office. In the case of a PCT application filing in Russia, Skoltech will have to pay about 2 000 USD to Rospatent. There is often a delay of 2-3 years between the second and third steps. The third step itself can take about a year.

Patents are valid only in the countries of issuance. If protection in multiple countries is needed, the steps should be repeated to complete the patenting process in each country. The total cost of obtaining and maintaining the patent through its life often exceeds 15 000 USD per country.

As soon as the patents are issued, it is up to KTO to make sure that the required annual patent maintenance fees are paid, in order to keep the patents valid in the countries of patenting.

 

32. What if I created a RIA with someone from another institution or company?

Generally, in this situation the result of intellectual activity will be jointly owned by Skoltech and the other institution or company, and each author will assign his/her patent rights to his/her employer. The KTO@Skoltech will work with that organization to determine who will lead the management of the RIA: protect and license the RIA, share expenses associated with the patenting process, and allocate the licensing revenue. Usually, the parties draw up a Joint Invention Agreement (JIA) which defines the obligations and responsibilities of the parties in this process.

 

33. Will Skoltech initiate or continue patenting activity without an identified licensee?

Skoltech will decide whether to file a patent based on the technology assessment and commercial potential. Existence of a potential licensee is preferable but not a necessary factor.

If after a period of time the IP is not licensed, the KTO may stop the patent maintenance process.

 

34. Is there an IP plan and budget at Skoltech? Should I keep the KTO aware of my research plans?

The KTO has a limited budget for patenting. Each Skoltech’s laboratory/division/CREI should allocate funds for patenting within its budget, depending on the patenting plans of the laboratory/division/CREI.

 

35. What is a start-up and why choose to create one?

A start-up is a new business entity which is formed specifically to commercialize a technology licensed from Skoltech. The key factors to be considered when making a decision regarding establishing a start-up are as follows:

• Is the author ready to be involved in a start-up? One of the criteria for the authors to make a decision on funding is that the author is an active participant and the driving force in a start-up.
• Is this technology appropriate for a start-up or is it better suited for licensing to an existing company?
• Will the start-up be able to raise enough funding to develop its business?
• What is the development risk? In many cases large companies don’t want to take the risks associated with technology commercialization. These companies would rather buy a successful start-up.
• What are the development costs vs. the investment return? Can the start-up investors obtain their needed rates of return?
• What are the potential revenues, and will future products be sufficient to create a sustainable company?

 

36. Who decides whether to form a start-up?

It is important that the author comes to the KTO with a high degree of motivation. The author who wants to form a start-up should provide the KTO with a preliminary version of a business model, and the KTO will work with the author to determine the likelihood of success. Ultimately, the final decision is made by the KTO based on the commitment of investors (such as venture capitalists or angel investors) and the technology appropriateness for the start-up formation.

 

37. What is the role of the KTO in forming a start-up?

The support provided by the KTO includes matchmaking with investors, making suggestions on the business plan, and negotiating the License Agreement.

 

38. Can the technology be licensed to a start-up exclusively or nonexclusively?

Usually risks associated with commercializing early-stage technologies are high. Thus, start-up investors often prefer exclusive licenses in order to insure competitive advantages over other potential market players. This is especially true for university-generated technologies, which tend to require a long commercialization schedule. Thus, the KTO@Skoltech is willing to negotiate both exclusive and nonexclusive licenses with start-ups.

 

39. Should start-up pay licensing fees and royalties?

Usually start-ups don’t have enough cash to pay substantial initial licensing fees. Thus, Skoltech will usually negotiate for equity as a partial substitute for cash as an initial licensing fee. Royalties are usually based on sales, and they are negotiated on a case-by-case basis.

 

40. How will the Knowledge Transfer Office market my technology?

Skoltech is willing to carry out the technology marketing activities with the active participation of the authors. First of all, the KTO@Skoltech will publish information on its web-site about the technology. Second, the KTO can search for and establish contacts with companies that may be interested in the technology. Third, the KTO can advertise the technology at conferences, fairs, and on the Internet, as well as in specialized databases. The latter ones currently include: AUTM Global Technology Portal and Inteum Technologypublisher.

 

41. How are most licensees found?

The authors should be the most knowledgeable regarding the needs of the market; often they can identify the best possible licensees for their RIAs. So, the KTO@Skoltech will first talk with potential licensees identified by the authors. As needed, the KTO will conduct technology marketing using specialized technology marketing tools and by contacting the companies from the KTO‘s network of contacts.

 

42. How long does it take to find a potential licensee?

In cases where an industrial sponsor sponsors the research, that sponsor obtains a nonexclusive license on the intellectual property which originates from such sponsorship. If the research isn’t sponsored by an industrial sponsor, it can take years to find a licensee.

 

43. How can I assist in marketing my technology?

The author’s efforts in marketing the technology are vital, and the KTO supports this. The author can market the technology by initiating contacts with potential licensees. The discussion with the companies should include only those aspects which are covered by a patent or a filed patent application. Authors should consult with the KTO if in doubt about what can be discussed with potential licensees. The terms and conditions of License Agreements cannot in any way be discussed or negotiated with such licensees. KTO is the only authority to conduct such negotiation.

 

44. When can I start the technology marketing process?

Companies gain competitive advantage by being first to market with new technologies. So the technology marketing process should be started as soon as possible – in some cases even before a technology is fully developed.

Note: care must be taken when marketing the technology to companies before the patent is filed. The KTO@Skoltech is willing to support you and provide advice prior to approaching a company with your idea/invention/technology.

 

45. What documents are usually necessary to communicate with potential licensees during the technology marketing process?

• If a patent is either not filed or not yet published, Nondisclosure Agreements (NDA) and Material Transfer Agreements (MTA) are usually executed prior to discussion with potential licensees in order to freely exchange information and/or samples;

If the patent application is published, it is relatively safe to talk to potential licensees without any Nondisclosure Agreements. However, Material Transfer Agreements should be signed in order to document any sharing of samples.

• Patent applications and copies of scientific papers are the main documents which are in most cases requested by potential licensees;
• License Agreement templates and Skoltech policy documents help provide potential licensees with general information concerning licensing rules, clauses, etc.

 

46. What is a license (License Agreement)?

A license is a tool by which the owner of intellectual property (the “licensor”) grants another party (the “licensee”) permission to assume some of the owner’s rights to the technology. Typically the terms and conditions of a license are regulated by the License Agreement. A License Agreement is a written document describing the rights and responsibilities of the licensor and a licensee within a license. The terms and conditions of a License Agreement usually include but are not limited to the following: payment method, payment amount (licensing fee, royalty, etc.), territory of use, field of use, exclusivity, licensee’s diligence, and duration. In negotiating License Agreements, the KTO always retains the right to use the technology for noncommercial purposes at Skoltech and elsewhere.

 

47. Can there be more than one licensee?

The more investment is needed for the technology to be brought to market, the more exclusivity the investors usually require. To address this situation an exclusive or nonexclusive license can be executed with respect to a certain technology.

• For every IP there can be an unlimited number of nonexclusive licenses.
• In the case of exclusive licenses there can be more than one licensee for one IP. For example, exclusive licenses can be set according to fields of use or territories. Skoltech can choose to license broadly or limit licenses to specific territories or fields of use.

 

48. How is a licensee chosen?

The authors are usually the first sources of information for the KTO when choosing companies for licensing. In general, the licensee should be chosen by his/her ability to commercialize the technology for the general public and societal benefit. There are two main groups of potential licensees: a) established companies skilled in the field of technology, and b) start-up companies (Skoltech spin-offs) formed by the Skoltech faculty/researchers/students. The decision of whether the technology should be licensed to an established company or a start-up is based on the technology features and, in the case of the creation of a spin-off, the authors’ motivation and business skills. Since the authors may not have business experience, they often seek entrepreneurs with business skills and expertise to partner with them. Through the Skoltech is prepared to provide assistance with identifying and matching authors and entrepreneurs.

 

49. What can I expect to gain if my technology is licensed?

There are several major benefits the authors gain from technology licensing. Those include license revenues (1/3 of the net license revenue income less patenting and administrative costs). Additionally, authors enjoy the satisfaction of knowing their technology is being deployed for the benefit of the general public. Another benefit is the close relationship to industry, which can help augment the quality of the author’s teaching, research and consulting.

 

50. What is the relationship between an author and a licensee during technology commercialization, and how much of the author’s time and effort will it require?

In the first part of the technology commercialization process the author helps the KTO to identify the licensee. In the second part the author assists the KTO in the license negotiation process to value the technology. In the third part the licensee can hire the author as a consultant to technically support him or her with the technology implementation. The licensee may also provide research sponsorship to Skoltech to further the licensed technology. The time consumed on these activities usually varies depending on the needs of the licensee and availability and involvement of the author.

 

51. What other types of agreements and considerations apply to technology transfer?

The main agreements supporting the technology transfer process include:

• Nondisclosure Agreement (NDA) – allows the parties to share confidential information;
• Material Transfer Agreement (MTA) – allows the parties to share tangible research property, such as samples produced for evaluation;
• Option Agreement – prohibits the licensor from negotiating a license with anybody else during the option period (usually 3-12 months). This agreement is usually signed in order for the optioning party to secure a limited period of time to make a decision on whether to acquire a license;
• Joint Invention Agreement (JIA) – for cases when the employees of the parties become the co-authors of a single RIA. The conditions usually specify the leading organization, patenting fees reimbursement, revenue distribution, etc.;
• Research (and Development) Agreement – a contractual agreement for Skoltech to conduct research that is funded by funding agency or company.

 

52. What activities occur during technology commercialization?

Since the Institute’s technologies are usually early stage, the licensee will continue to develop and enhance the technology, then work to reduce risks and prove reliability in order to satisfy the market, as well as customer requirements and needs. This usually involves prototyping, testing, finding/developing the proper technological process for the manufacturing, etc. Documentation for training, installation and product marketing is often created at this phase. Benchmarking tests are often required to demonstrate the product/service advantages and to position the product on the market.

 

53. What revenues are generated for Skoltech if commercialization is successful?

The technology development and R&D process requires lots of time and effort of the Skoltech faculty, researchers, postdocs, students, etc. Skoltech allocates certain funding, including sponsorship money, for their work. The patenting process also requires certain related fees and payments for patent application drafting and filing. A portion of the expense can be covered by revenues from successful technology commercialization.

• In case of licensing a technology to companies or start-ups, the licensees pay certain licensing fees (may incude license issue fee, milestones fees, annual fees, etc.). These fees can vary from a few thousands to hundreds of thousands of dollars.
• One more source of revenue is running royalties on the eventual sales of the licensed products, though it can take years for the product to make a significant market contribution.
• Equity, if included in a license (usually in case of licensing to start-ups), can yield similar returns, but only if a successful liquidity event occurs (public equity offering or the sale of the company).

 

54. What will happen to my technology if the licensee is unsuccessful? Can the technology be licensed to another entity?

Licenses typically include performance milestones that, if unmet, can result in termination. This allows for subsequent licensing to another business. However, time delays and other considerations can hinder this re-licensing.

 

55. How are license revenues distributed?

As per the IP Ownership Policy, Skoltech will distribute potential revenues to the authors (1/3 of the net income) and to Skoltech budget (2/3 of the net income). Licensing revenues are distributed after all patenting expenses and other administrative fees are covered.

 

56. What are the tax implications of any revenues I receive from Skoltech?

According to Russian legislation, licensing revenues received by individuals are subject to social tax and personal income tax.

 

57. How are the revenues distributed if there are multiple authors in a licensed technology?

The revenues are usually distributed equally among the co-authors unless all of the authors agree on a different allocation. The authors may submit to the KTO a document reflecting the degree of co-authors’ participation in the RIA creation process.

 

58. If I have assigned my IP rights to a Skoltech research partner and I am a co-author, will I receive licensing revenues?

If you are an employee of a Skoltech partner organization, and you are the co-author of the RIA created at Skoltech or using Skoltech resources, the KTO@Skoltech will transfer the respective part of the licensing revenues to your organization for further distribution to you in accordance with the internal rules of your organization.

 

59. What if I receive equity from a company?

Skoltech policy states that if the author received or will receive equity directly from a start-up which licensed Skoltech technology, such author cannot claim any part of the company’s equity received by Skoltech in connection with that license. Equity may include stock, stock options and/or stock warrants.

 

60. How is equity distributed?

Equity received by Skoltech under License Agreement is distributed to the authors upon the liquidity event, in accordance with the same rules as the distribution of cash revenues. This applies only to situations when the author is not receiving equity directly from the company. The shares are issued by the company to the authors in their names.

1. Who owns intellectual property created under my sponsorship?
2. I pay my own/my company’s money, why can’t I have ownership rights to the IP?
3. Can Skoltech ever re-assign the IP created within my sponsorship to a third party?
4. What if I want to license a technology exclusively but need time to think and be convinced that the technology really works for me?
5. What is an Option Agreement?
6. Do I have to make payments within the Option Agreement?
7. What is an exclusive license?
8. What is a nonexclusive license?
9. What portion of Skoltech licenses is exclusive and what portion is nonexclusive?
10. Does the KTO@Skoltech file patents outside of Russia?
11. Who should prepare the License Agreement?
12. Are technology development expenses considered when estimating licensing fees and royalty rates?
13. What if I want to test a sample or provide a sample for testing?
14. What if I cannot meet my obligations within the License Agreement, my business model has changed, the market situation has changed, or I‘ve decided to stop using the licensed IP? Can I request that the License Agreement be amended or terminated?
15. Whom can I contact if I have questions or to initiate the patent licensing process?

 

1. Who owns intellectual property created under my sponsorship?

According to the Skoltech IP Policy, intellectual property created by Skoltech employees and/or with significant use of Skoltech resources should be assigned to Skoltech. The sponsor is granted a time-limited pre-emptive right to elect one of the following licensing options on commercial use of the IP:

1. a nonexclusive royalty-free license;
2. an exclusive royalty-bearing license.

However, the sponsor is obligated to reimburse to Skoltech related patent prosecution expenses, such as patent filing and patent maintenance fees, in any country where the license has been granted to the sponsor.

2. I pay my own/my company’s money, why can’t I have ownership rights to the IP?

One of the Skoltech’s mission statements is to foster innovation for the benefit of the general public. Also, Skoltech is aiming at becoming one of the most economically impactful universities in the world. Therefore, Skoltech should have control over IP created by the faculty and students, so that the IP could be used as effectively as possible for public benefit. However, Skoltech is willing to provide the sponsor on a pre-emptive basis with as much commercial rights to the IP, and as much exclusivity as it is needed for the success and competitiveness of the sponsor’s business. The transfer of necessary rights to the sponsor can be done within exclusive or nonexclusive licenses. In this sense control of IP by Skoltech does not mean blocking IP, Skoltech will only reserve for others the remaining commercial and noncommercial rights, such us exclusivity in other fields of use, other territories, other period/time, right to practice the IP for research purposes, etc.

“Freedom of research” is one of the basic principles that will allow Skoltech to create world-class technologies in the future. In order to be able to do research freely, Skoltech’s prior intellectual property should not be blocked, leaving the room for advancing Skoltech’s background knowledge and IP. Skoltech should have access to and control over the IP that Skoltech faculty create, thus accumulating the so called background IP. The background IP becomes accessible for sponsors within licenses, too, and it allows the licensees to legitimately exercise project IP without needing to additionally secure rights to or infringing the dominating IP.

Sponsored research implies funding within a limited period of time. However, what the sponsor gets within the funding period is access to researcher’s experience and expertise often accumulated within decades. Therefore, granting all IP rights to the sponsor may be regarded not only as transfer of rights to knowledge created within the sponsorship, but also as transfer of rights to prior knowledge.

Finally, we believe that in order for the academia-industry collaboration to be successful, all parties involved in technology creation, transfer and commerciaization process, including the researchers, the institute and the company, should be motivated, so that a “win-win” scenario is implemented. Therefore, ownership of IP by Skoltech allows us to motivate researchers to create commercially attractive results and to propery disclose them to Skoltech and to the sponsoring company. The company then gets all needed rights to the IP on a pre-emptive basis to exploit the IP for the company’s strategic and commercial benefit.

 

3. Can Skoltech ever re-assign the IP created within my sponsorship to a third party?

According to Skoltech IP Policy, Skoltech cannot assign IP to third parties unless the sponsor’s rights have been met.

 

4. What if I want to license a technology exclusively but need time to think and be convinced that the technology really works for me?

The KTO suggests that the company negotiates an Option Agreement before making a final decision on licensing a technology from Skoltech.

 

5. What is an Option Agreement?

An Option Agreement is an agreement that the licensor will not negotiate a license with anybody else during the option period. Within the term of an Option Agreement Skoltech, as a licensor, is prohibited from either signing a License Agreement on a certain IP with third parties, or taking any steps toward its marketing.

The conditions of an Option Agreement also include the territory of use and the purpose of optioning. The purpose of Option Agreement is to provide a potential licensee with a certain period of time to perform due diligence and make a decision regarding whether to license the IP.

 

6. Do I have to make payments within the Option Agreement?

Normally, you will have to pay a fixed option fee, depending on the term of the Option Agreement. The optioning party is also responsible for patent fees occurring during the option period.

 

7. What is an exclusive license?

It is a license limited to a specific scope or field, such as context, market, territory, or time. ‘Exclusive’ does not mean ‘one and only’ license granted, but rather that the licensor agrees not to grant other licenses with the same rights within the scope or field covered by the exclusive license. It may refer to a geographical area, technological application, method of production, or production of a specific product. Exclusivity may or may not include competition from other licensees or the licensor itself, granting of sublicenses, performance requirements to be met by the licensee, and/or a time limitation. The licensor, in fact, can issue any number of licenses with different rights in the same scope, or licenses with same rights in different scopes.

 

8. What is a nonexclusive license?

A nonexclusive license is a license in which the same rights to a technology can be granted to several licensees within the same scope or field of use.

 

9. What portion of Skoltech licenses is exclusive and what portion is nonexclusive?

For start-ups licenses are usually exclusive (but in a specific field of use); otherwise it would be difficult for such a company to attract investment.
In cases of sponsored research – licenses can be either exclusive or nonexclusive; however, the sponsors has a right to elect either a royalty-free nonexclusive license or a royalty-bearing exclusive license.
The level of exclusivity in licenses granted to third parties depends on the case and the licensee‘s business model.

 

10. Does the KTO@Skoltech file patents outside of Russia?

Normally, the KTO doesn’t file patents outside of Russia. However, upon direct request of the licensee, the KTO will file patents in other countires, and the licensee agrees to reimburse to Skoltech the corresponding expenses associated with foreign patent filing and maintenance.

 

11. Who should prepare the License Agreement?

In general, the process is started with the Skoltech proposal addressing both the licensee’s and Skoltech’s concerns which is prepared on the basis of a simple standardized License Agreement template. The best way for quick negotiations is for the licensee to provide a business plan to the KTO, and the KTO will provide a proposal supporting this business plan. Once Skoltech and the licensee come to an agreement, Skoltech will prepare a proposal within less than 2 weeks. The next steps may include negotiation of the initial proposal of Skoltech.

 

12. Are the technology development expenses taken into account when estimating licensing fees and royalty rates?

No, the value of technology is based on its commercial potential, not with the expenses associated with its development.

 

13. What if I want to test a sample or provide a sample for testing?

The transfer of samples is usually dealt with within Material Transfer Agreements. If you want to test a sample in order to make a decision on licensing please contact the KTO at with the specific request regarding the material/sample of your interest, along with the technology ID or patent application number. If you want to provide a sample to Skoltech, please contact the Office of Grants and Contracts.

 

14. What if I cannot meet my obligations within the license, my business model has changed, the market situation has changed, or I‘ve decided to stop using the licensed IP? Can I request that the License Agreement be amended or terminated?

We understand that the market situation can change. The KTO@Skoltech will work hard with the existing licensees before considering alternatives.

Termination of the License Agreement by the licensee is possible at any time with the prior notification of Skoltech.

 

15. Whom should I contact if I have questions or want to initiate a Skoltech technology or trademark licensing process?

We would be happy to asnwer any questions you might have. Please address them to .