The primary mode of technology transfer involves licensing of technologies to companies.
A*STAR aims for a flexible approach to licensing arrangements for successful collaborations with industry. However it has to balance this flexibility with its mission to promote research and the broad dissemination of technology to industry to promote economic activity.
A*STAR conventionally adopts a non-exclusive licensing model. This allows for A*STAR to benefit more industry players. In most cases, where an industry partner-collaborator has fully funded (including overheads) the project, A*STAR is prepared to grant them a non-exclusive, royalty-free right to use the FIP (foreground intellectual property) generated during the project.
This is reasonable as the collaborator would have made significant funding contributions to the creation of the FIP and will therefore be able to use the FIP for its own purposes without further payment. BIP (background intellectual property) will be treated as set out above.
In order to grant a collaborator some competitive advantage, particularly where the collaborator has fully paid for the work which results in the IP, A*STAR may be prepared to grant the collaborator an exclusive license over A*STAR owned FIP and the joint FIP; provided that the exclusivity (which results in A*STAR being locked out of the FIP) is limited in terms of time, field of use, and territory.
Exclusive licenses will be royalty-bearing or fee-based as A*STAR will be locked out of using this FIP to work with and benefit other industry players. A*STAR may also consider other factors such as the technologies involved, the inventive, financial and other contributions of the collaborator, the potential uses of the FIP and the extent of influence of the collaborator's BIP over the FIP when determining whether exclusive licenses should be granted.
Where the FIP is jointly owned, each party should have the right to freely use, exploit and license the jointly-owned FIP to third parties.
A*STAR conventionally retains the right for all its RIs to use the jointly-owned FIP for their R&D activities.
From A*STAR's point of view, it is important that the technology be used to generate economic activity and not set aside or used to block others from entry into or competing in the same space. To ensure this, A*STAR routinely imposes, in its licence agreements, commercialization obligations, minimum royalty payments, and technical and production milestones such as minimum business spending and investment in the Company. This is to ensure that licensees take active steps to use the technology licensed to introduce products, processes and services into the market, which will in turn, generate more economic activity for Singapore.
Where the IP is not used or not actively used, it is only reasonable that exclusivity is withdrawn or that it be returned to A*STAR and this requirement is commonly built into our license arrangements.
LICENSE AGREEMENT TEMPLATE - STANDARD TERMS & CONDITIONS
You can download a sample license agreement template that we use (via the link below), to get a flavour of our standard terms and conditions. If you choose to take a license from us and agree to these standard provisions listed therein, we are usually able to close the agreement expeditiously once we have both decided on the key commercial terms (such as royalty rates, field of use, territory, etc). The standard terms as spelt out in our license agreement templates are consistent with best practices of most Technology Transfer Offices of government-funded research and academic institutions in the US and UK.
We do not provide indemnities and warranties. Our technology is provided 'as-is'. The licensee, as the party who will be commercially exploiting the technology in a particular field and manner, has to perform his own checks and due diligence on the prior art and any regulations governing the use of the technology in question.
We do not generally agree to non-competition clauses in our license agreements. Neither will we agree to provide a pipeline of A*STAR's future research results (e.g. enhancements on the licensed technology) to any one licensee. This would be a monopolistic and anti-competitive arrangement.
We require our licensees to provide indemnification against the liabilities that might arise from the use and sale of their commercial products involving the licensed technologies. This is because the licensee has full control over the use of the licensed technology and should it be used in a breaching manner which causes us to incur liability, we will need to be fully compensated.
Click here to view/download our sample license agreement template.
LICENSING PROCESS
- Negotiate license terms
- Understand the operations, needs and growth potentials of licensees
- Assess licensees' past financial performance and credit worthiness
- Work out the marketing plan of the technologies licensed together with licensees
- Work with selected high potential licensees for future growth
- Continual engagement with licensee including regular visits
For enquiries on Licensing, please contact:
