Technology Transfer - Licensing
A license creates a contractual relationship between the Government and the non-DOE party. Licenses transfer government-owned intellectual property (IP) to the private sector. NETL licenses to partners who have a commercialization plan with a high probability for technology commercialization and for sharing the benefits of the IP with the public.
The licensor grants the right to practice the invention claimed in the licensed patent or patent application or invention disclosure to the licensee, usually in consideration for a payment (royalties) made by the licensee to the licensor. By granting the license, the licensor agrees not to sue the licensee for patent infringement.
Licenses include royalties, exclusivity, and field of use. Royalties include signing/execution fee, minimum royalties, royalties on products sold, and sublicensing royalties.
Different license options that a party may request from NETL include:
- Exclusive - Licensor grants all rights to the licensee; licensor cannot grant rights to another
- Co-exclusive - Licensor grants all rights or rights to specific fields of use to a limited number of licensees (two or more).
- Partially exclusive - Licensor grants all rights to the licensee in a particular field of use; licensor can grant rights to another in a different field of use
- Non-exclusive – For multiple parties, licensor can grant rights to another party
- Non-exclusive with an option - Licensor can initially grant non-exclusive rights to a licensee to conduct research or evaluation of the technology for specific period of time. During this specified time, the licensee may convert the non-exclusive rights to exclusive rights. The exclusive rights can be limited to a particular field of use or all fields of use.