BASICS OF LICENSING – Rita Manak, Ph. D.

by Chuck Umeda 9810

Rita Manak, Ph. D., Director of the Office of Technology Transfer (OTT), University of Arizona, spoke on “Basics of Licensing.”  Inventors seeking to license their product must understand the terminology utilized in such contracts, because undefined segments may cause legal problems later.  Patent licensing, license grant, licensing products were all discussed. 

The OTT serves the University staff with intellectual property ranging from hardware, devices, processes, to computer software.  Both utility patents and provisional patents are used.  The big advantage of provisional patents is their lower cost, but since they have been in existence for only about two years, the “jury is still out” as to the degree of protection they actually provide.

The item of great interest to inventors is compensation.  The inventor must be control of this phase to define how royalties are determined.  Royalties should be a percentage of net sales, which is equal to gross sales less the costs specific to the product.  All parts of this should be fully understood and agreed upon by the parties involved.

The OTT has a web site, which provides useful information on patents, trademarks, copyrights, etc.: http://vpr2.admin.arizona.edu/ott.  Rita also distributed boilerplate forms for licensing.