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How does APL transfer
its technology? How are license agreements
negotiated? How does APL select a
licensee? Does APL give preference
to certain companies? Will APL license
to companies outside the United States? What
financial terms are usually included in a license agreement with APL?
What does a standard APL license agreement
look like? Is APL flexible with its
license terms? How much time does
it take to secure a technology license from APL? Can
I get an exclusive license to APL technology? Will
OTT negotiate research agreements?
How does APL transfer
its technology?
The APL Office of Technology
Transfer is responsible for all aspects of marketing and licensing APL technology.
OTT engages in an aggressive program to commercialize its technology through successful
partnerships with business and industry. The OTT uses a variety of tools to accomplish
the technology transfer goals of APL including license and option agreements,
cooperative research agreements, strategic partnering and spin-off companies.
How are license agreements
negotiated?
All technology transfer license
agreements are negotiated through the Office of Technology Transfer and executed
by the APL Director of Technology Transfer. OTT will work to negotiate agreements
that share risk and reward and give the technology the best chance of success
in the marketplace.
How
does APL select a licensee?
APL seeks
licensees who have the necessary resources and planning to successfully commercialize
the licensed technology. The OTT will qualify the company or companies to ensure
that they have the necessary capital, infrastructure and business focus to get
a product on the market.
Does
APL give preference to certain companies?
APL
is committed to impacting the economic health of the State of Maryland and as
such will seek to work with local companies if possible.
Will APL license
to companies outside the United States?
Yes.
However, technologies developed with federal funding require a substantial part
of the product manufacturing to be done in the United States. Federal export control
statutes and regulations also may affect licensing outside the United States.
These are assessed on a case-by-case basis.
What financial terms are usually included in a
license agreement with APL?
Typically,
APL looks for licensing terms that include a license execution fee, royalties
on sales of products, milestone or annual payments, patent reimbursement, and
diligence payments for the licensee to market and sell a product. A sample
license agreement is available on our web site.
What does a standard APL license agreement look
like?
A sample
APL license agreement may be viewed on our web site.
Is APL flexible with its license terms?
Yes. From a starting point of basic business practice,
OTT will tailor our standard agreements to fit each situation. Our goal is to
fairly value the technology and structure terms that are fair and reasonable for
the given opportunity.
How much time
does it take to secure a technology license from APL?
Turnaround
time varies widely from case to case, but the OTT works from pre-approved agreement
language and has signature authority for technology transfer agreements which
helps to expedite the process.
Can
I get an exclusive license to APL technology?
Yes.
APL will seek a license arrangement that will give the technology the best chance
of success in the marketplace. While in certain situations we prefer to execute
non-exclusive license agreements, exclusive, non-exclusive, co-exclusive, and
field of use agreements are common.
Will
OTT negotiate research agreements?
If
research funding is associated with an option or license agreement, it will be
included as a separate term in the license agreement, and a separate R&D contract
will be executed. OTT works closely with the APL Office of Contracts in these
instances and the Office of Contracts will handle cases where only a contract
and no intellectual property is to be transferred.

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