Licensing FAQ

• What is an IP license?

  • An IP license is a contractual instrument by which the University grants a party permission to use IP rights that belongs to the University for specific purposes, subject to certain terms and conditions that typically include a consideration to the University based on the estimated value of the invention. A license may be exclusive, co-exclusive or non-exclusive. A license may be restricted to a particular field of use and/or geographical area.

• Will the university initiate or continue patenting activity without an identified licensee?

  • Often the university accepts the risk of filing a patent application before a licensee has been identified. After university rights have been licensed to a licensee, the licensee generally pays the patenting expenses. At times we must decline further patent prosecution after a reasonable period (often a year or two) of attempting to identify a licensee (or if it is determined that we cannot obtain reasonable claims from the PTO).

• If I have an interest in a private company that is based on intellectual property owned by SJSU that I developed as an SJSU employee, may I share in the licensing income received by SJSU?

  • If an SJSU employee owns a substantial interest in a private company that licenses intellectual property from SJSU and that intellectual property was developed by that SJSU employee, then that SJSU employee may not share in the “inventor share” of any equity received by the university as consideration unless otherwise agreed to in writing prior to the licensing agreement.

• What if I created the invention with someone from another institution or company?

  • If you created the invention under a sponsored research or consulting agreement with a company, an SJSU licensing specialist will need to review that contract to determine ownership and other rights associated with the contract and to determine the appropriate next steps. Should the technology be jointly owned with another academic institution, SJSU will usually enter into an “inter-institutional” agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues. If the technology is jointly owned with another company, the licensing specialist will work with the company to determine the appropriate patenting and licensing strategy.