Background

Occasionally, faculty or staff members create materials or other intellectual property that are owned by UI under the university’s Intellectual Property Policy, and their unit (college, department, center, institute, or other similar administrative unit) would like to sell the material directly to customers/end-users.  Some examples of this might include:

  • A department selling its custom software for tracking administrative tasks to a similar department at another university. 
  • A college selling training manuals or providing paid access to web sites to users outside of the UI community. 

Please note the difference between UIRF licensing activity and sales by units as further described below.

 

UIRF Licensing

UIRF licenses to companies (including faculty start-ups) that then commercialize UI-owned IP by selling products or services to end-users. In general, UIRF does not license/sell directly to end-users. However, there are exceptions:

  • Tangible research materials, like antibodies and cell lines, that are commercially licensed to a company for its internal research purposes. 
  • Software commercially licensed to a company for its internal use. 

In rare circumstances, UIRF may be able to license IP directly to end-users.  Creators and units interested in this possibility can submit a disclosure to UIRF, and UIRF will consult with them on available approaches for commercialization.

Sales by Units to Customers/End-Users

Before starting any sales activity, it is a good idea for units to develop their own guidelines.  Some points that units should consider: 

  1. Does the activity align with the university’s mission?
  2. Will sales create issues with unrelated business income for the university or program income under federal grants?
  3. Does the university own the IP under the Intellectual Property Policy or under contract? Are there any funding agency or other contractual limits on sales? UIRF is available to help units address these questions.  Please submit a disclosure on the IP in question to begin the process.
  4. Who will handle the administrative tasks of sales:  accounting, distribution, web site maintenance, customer service, etc.?
  5. What will the unit do with the money? Will it be used to reimburse unit expenses?  Will any of it be used to compensate the creators of the IP?

Additional Considerations

For Patentable IP:

  • Consult with UIRF before any sale or offer to sell. 
    • Sales might prevent UIRF from obtaining a patent.
    • Sales might implicitly grant end-users a license to UIRF patents.
    • Sales might enhance or hinder UIRF’s licensing efforts.
  • Revenue sharing with inventors and units.
    • Sales by a unit do not flow through UIRF, and thus do not constitute revenue shared under the IP Policy.
    • If UIRF subsequently licenses the patent, revenue received by UIRF under its license agreement would fall under the IP Policy and revenue under the license would be distributed by UIRF according to the policy. 

For Copyrighted IP:

  • If there are any authors who are not obligated to assign the IP in question to UI, the unit/college will need to come to a written agreement with those author(s) prior to any direct sales.
  • Revenue sharing with authors and units. 
    • Sales by a unit do not flow through UIRF, and thus do not constitute revenue shared under the IP Policy. 
    • If UIRF subsequently licenses the copyright, revenue received by UIRF under its license agreement would fall under the IP Policy and revenue under the license would be distributed by UIRF according to the policy.