Certainty at Michigan

Certainty at Michigan is a pilot program designed to provide certainty on IP outcomes to sponsors and expedite sponsored research agreements.

The Standard Model

Typically, research sponsors receive a non-exclusive, royalty-free license to use Project intellectual property outcomes for research and development purposes. In cases where the sponsor agrees to pay patenting costs, the sponsor may also receive an option for an exclusive license to be negotiated on a fee-bearing basis. This model works well for both the university and the sponsor where IP outcomes are less concrete.

Standard Option Rights Cost
Internal non-exclusive license for research & development without right to sublicense.

Option period to negotiate a commercial non-exclusive or exclusive license.

Terms to be negotiated upon execution of option.

 

In response to industry and to researcher feedback that new models would catalyze research partnerships, Innovation Partnerships created the Certainty at Michigan Program to institute various new licensing models that will provide greater certainty on IP outcomes and expedite the execution of sponsored research agreements.

How it Works

In the early stages of a sponsored research project, a sponsor of an eligible project selects from three pre-negotiated IP options within the Certainty at Michigan Program. These pre-negotiated IP terms are then inserted into the funding agreement. Upon signature, the sponsor pays the award amount and the associated technology fee based on the pre-negotiation IP selection. During the course of the project, U-M will notify the sponsor of any resulting project IP. A sponsor can direct U-M to file patents at the sponsor’s expense. Project IP is included in the sponsor’s previously elected license type. Depending on the election, a success fee may be applicable.

Commercial NERF Rights Cost
Worldwide royalty-free non-exclusive commercial license (with standard partner sublicensing rights) Up front Tech Fee of greater of $5,000 or 5%

3 post-project licensee fees each of greater of $3,000 or 3% of contract price at: (i) 90 days after invention report; (ii) 1 year after invention report; and (iii) 2 year after invention report

 

Term-Limited Exclusive Rights Cost
3-year worldwide royalty-free exclusive commercial license (with standard partner sublicensing rights)

Reverts to non-exclusive (with standard partner sublicensing rights) after 3 years (from date of invention)

Up front Tech Fee of greater of $10,000 or 10%

3 post-project licensee fees each of greater of $5,000 or 5% of contract price at: (i) 90 days after invention report; (ii) 1 year after invention report; and (iii) 2 year after invention report

 

Commercial Exclusive Rights Cost
Worldwide royalty-free exclusive commercial license with the right to sublicense or cross license Up front Tech Fee of greater of $15,000 or 15%

Choice of (made in SOW):

(A)Fee of greater of $100,000 or 100% of contract price due upon  first commercial use; or

(B) 1% royalty on all Net Sales exceeding $20M annually

 

The Advantage to Industry: More Confidence in IP Outcomes Can Create a Competitive Edge

Industry partners have indicated an increasing need for confidence in IP outcomes from research projects. By choosing a Certainty At Michigan Option, sponsors can guarantee their licensing rights to IP outcomes for a lower up-front cost. This can preserve competitive advantage and ensure a favorable IP position.

The Advantages to Researchers: Expediting Progress and Fostering Relationships

The Certainty at Michigan Program has many advantages to researchers as well. It can enable the development of long-term research relationships, which can provide more predictability with respect to lab funding. Additionally, it serves to guarantee that the resultant technology has a partner to bring it to market. Finally, tech fees are, in most cases, subject to the University of Michigan Technology Transfer Policy, meaning that inventors receive a share of the revenue.

FAQ

Can researchers continue to use licensed technologies for research purposes?

Yes, as a Carnegie R1 research institution, it is required for our research mission to retain the right to use licensed technology for research and educational purposes.

If my company exclusively licenses the Project IP, can another company still use it? 

Exclusive licenses effectively take the product off the shelf, i.e., it is no longer available to competitors.

Don’t companies automatically own IP from sponsored research projects?

The cost of a research project at the University of Michigan is essentially cost reimbursement and indirect costs; these costs do not cover commercial rights in IP. In most cases, sponsors automatically receive preferential IP terms, including a free non-exclusive research license and an option for an exclusive license.

What projects are a good fit for IP menu terms?

Projects in which likely IP outcomes are discrete and known at the time of inception and projects in which it is imperative that sponsors have certainty around IP outcomes, in many cases due to competition, are good candidates for Certainty at Michigan. Sponsors operating on a small budget may also benefit from Certainty at Michigan as licensing fees are significantly lower pre-project.

What projects are not a good fit for IP menu terms?

Early-stage research projects in which IP outcomes are unknown can benefit from a standard IP framework (Menu Option 3). Projects where there is significant implicated background IP may be better served by other models.

Our Startup Commitment

Launching an average of 25+ startups a year means that Innovation Partnerships is well versed in the hardships faced by new companies in the tech space. We can be flexible in creating a solution that meets the needs of the startup sponsor and the project team. Please contact Innovation Partnerships to start the conversation.

Eligibility

Please find the eligibility criteria for the Certainty at Michigan Program below. If your project does not meet the requirements automatically, we may still be able to offer up-front options on a case-by-case basis. Please contact Innovation Partnerships to discuss.

1. PI approval required. Projects in which the PI has a financial interest in the Sponsor will be subject to COI approval and handled on a case-by-case basis.

2. Not available for projects involving or relating to cellular/molecular therapeutics and diagnostics.  Additionally, not available for medical device or medical diagnostic projects likely to result in the creation of a novel platform technology.

3. Not all options available for research awards/subawards from government, nonprofit, or other types of non-commercial sponsors, consortia agreements, awards for public service or testing.

4. If federal funding is used as part of the project, the license will be subject to other terms, such as government rights, to the extent required by applicable law including but not limited to Bayh- Dole.

5. Fees are calculated based on the entire project budget from the Sponsor including standard University F&A rates. The fee is based on the contract price obligated in the research agreement but the same rate would apply to future funding releases for the same Project.

6. Payment is due within 30 days. If not received, license rights will be automatically converted to the Standard Option.

7.  University controls filing and prosecution in all cases. In the event of an exclusive license or Sponsor’s instruction to file, Sponsor will reimburse costs and expenses. In the event patent costs are overdue the elected grant of rights is voidable at University’s discretion.

8. University Background IP is not automatically included but University will consider requests supported by the scope of work on a case-by-case basis.

9. In the event Sponsor receives an exclusive license Sponsor will use commercially reasonable due diligence to bring the full scope of the licensed products to market or processes to commercial use.

10. Partner sublicensing rights include the right to sublicense to a bona fide business partner of Sponsor for purposes of making, using, or selling products or services for the Sponsor.