License Agreement Concepts
The following are Concepts within License Agreements that are of Key Importance to Baylor College of Medicine and the Baylor Licensing Group:
The Big Picture: BLG’s mission is to maximize the impact of research at Baylor College of Medicine through commercial relationships that lead to the development of new products and services that benefit patients and the public. The college expects to share in the commercial success of our licensees and income from licensing activity supports the research, education and service missions of the college.
Retained Rights: As a non-profit academic research institution, preserving the rights of the college and of other academic institutions to continue to conduct non-commercial research involving the licensed technology is paramount to our academic mission. Baylor College of Medicine simply cannot enter into a license agreement that places restrictions on the ability of the college, its researchers, or researchers at other academic institutions to continue to conduct research involving the use of the licensed technology for academic purposes. Additionally, when we license technology that was funded by the federal government (which occurs in most cases), we are required to grant a non-exclusive license to the United States Government providing the government with the right to practice the licensed invention. This is true across academia, and is not unique to Baylor College of Medicine. Also, we cannot accept restrictions that prevent our ability to publish and disseminate information generated from this research.
Diligence: For industry partners that desire an exclusive license to a technology owned by Baylor College of Medicine, we expect the licensee to agree to provisions such that the licensee has good-faith obligations to diligently deploy resources to develop the technology for commercial market entry. The exact nature of the diligence provisions will vary from one exclusive license to another and are developed with the individual licensee and technology in mind.
Improvements: Baylor College of Medicine avoids agreeing to terms that confer rights to improvements in its license agreements, because this practice gives the perception that Baylor and the academic lab are obligated to that licensee and merely serves to be a continual source of new technology to that licensee. If a licensee desires to sponsor research in the faculty member’s laboratory to advance the technology, the licensee can license the advancements developed in that funded research as provided for in a sponsored research agreement.
Background Intellectual Property Rights: Baylor College of Medicine cannot license rights to background intellectual property that is indefinite and not clearly defined, or which may not be available for license. BLG carefully defines the parameters of the intellectual property assets, including patents, data, and tangible assets that are being licensed, so that both parties have a clear understanding of the scope of the transaction.
Warranties, Indemnification, and Insurance: As a non-profit academic research institution, Baylor College of Medicine requires that its licensing partners assume all commercialization risks associated with their activities under the license agreement. The college cannot, and will not, accept changes to the warranty and indemnification provisions that could put the college’s endowment at risk. Any insistence that the college change these key provisions will delay the completion of the agreement. Additionally, Baylor expects its licensees to comply with applicable laws, including export control regulations.