FAQ on Technology Licensing

Technology Licensing:

  1. How is technology licensing done at CityU?
  2. Isn't publishing enough? Why should technology be licensed?
  3. What is it like to go through a licensing process?
  4. How does the KTO find licensees for technologies?
  5. Who owns the rights in a licensing agreement?
  6. How much income is generated from licenses, and who gets it?

Other FAQs:

How is technology licensing done at CityU?

CityU Research Limited (CityUR) is a wholly-owned company of CityU and is the licensing arm of the University. CityU licenses its Intellectual property (IP) to CityUR, which then sub-licenses them to other companies. In a typical technology licensing arrangement, the licensee company is granted the rights to manufacture, market and sell products or services developed from the technology. These rights can be granted exclusively to the company or non-exclusively (ie., the University can, if it wants to, grant the same rights to other companies too).

In exchange for the rights to exploit the technology, the licensee company pays CityUR royalties (in cash or, in some cases, partly in cash and partly in company shares) on the proceeds from the exploitation. It should be noted, however, that the terms of licensing arrangements vary, and the above is only a very basic model.

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Isn't publishing enough for the dissemination of technologies? Why should technologies be licensed?

It gives great satisfaction to see your research results flourish into innovative inventions that benefit the lives of many. While publication is an excellent means of disseminating knowledge, academic journals and conference proceedings, mainly written for researchers, are not as readily available or accessible to the public and industry. Even after having identified a potentially exploitable technology, more development work and testing are still needed before a product or service is finally ready for the market.

You can help expedite the exploitation of the technology by playing an active role in the licensing process. Proceeds from licensing can also help offset the costs of patent application and maintenance (if any), and contribute to supporting your future work as well as future projects of the research centre, group or laboratory concerned.

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What is it like to go through a licensing process?

First of all, the KTO will try to learn as much as possible about the technology, for example, its strengths and weaknesses, fields of application, uniqueness, stage of development, patent availability etc. It will work with you to put together a set of technical materials and specifications to be used for marketing the technology.

If no potential licensee has been identified, the KTO will help locate licensing possibilities. Once a potential licensee has been found, the KTO will be responsible for negotiating a licensing deal on behalf of the University. The researchers' help is needed during this stage to lay down the specific details of the technology and to clarify any commitment to further development work as part of the license.

If the negotiating parties come to an agreement, a licensing agreement will be signed between the licensee and the University's licensing arm CityU Research Ltd. During the lifetime of the agreement, the KTO will work to make sure that all sides fulfil their obligations accordingly.

Staff should refer any potential licensees to the KTO, as the University cannot honour any legal agreements that have not been made according to the University's policies and guidelines.

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How does the KTO find licensees for technologies?

A number of licensees are companies who have previously worked with the researchers through industry-sponsored research projects, contract research or consultancy work.

Some licensees are found through personal contacts. Others have learned about the University's technologies from the activities and website of the KTO, and in particular, from the Technologies for Licensing Database and the Patent Database. The KTO is also exploring new opportunities through technology transfer agencies abroad and exhibitions.

The CityU Business & Industrial Club (CUBIC) under the KTO focuses on strengthening industrial links. It promotes the University's technologies through events such as the Technology Transfer Forums, the Emerging Technologies Forums and other special interest group activities.

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Who owns the rights in a licensing agreement?

In a typical licensing agreement, the University, through its licensing arm CityU Research Ltd., grants the licensee company or institution the rights to make and use a piece of technology. The ownership of the technology remains with the University.

Patents associated with a technology are often licensed together with the technology itself. The ownership of patents is also not changed by licensing.

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How much income is generated from licenses, and who gets it?

How much can a University make from technology licensing? It differs from case to case, and market to market. The value of a technology is the price acceptable to both licensor and licensee, and is dependent on many factors, such as availability of patents, stage of development, compatibility with the licensee's business model, comparative advantages over existing and emerging alternatives, market conditions etc.

Income from licensing arrangements is typically in the form of royalties. After making allowances for certain expenses, royalties received will be used to offset costs incurred in the application and maintenance of any patents involved (more on patent costs) as well as any cost in reaching or effecting the license. The remaining amount will be distributed between the University and the creators of the technology.

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