Licensing Intellectual Property Developed at the University of Illinois at Urbana-Champaign to Companies Affiliated with University Employees

Purpose

To provide a framework for licensing intellectual property developed at the university to companies affiliated with university employees consistent with other applicable university policies and consistent with the university’s mission of teaching, research, public service, and economic development.

Background

The university recognizes the potential benefits of allowing university employees to participate in commercialization activities related to technology transfer, including making available to the public important results of university research and teaching, enhancing an academic staff member's professional skills, helping to attract and retain outstanding faculty and research professionals, and providing valuable educational experiences for students. The university is committed to enabling and facilitating the growth of companies affiliated with university employees when licensing to such entities is a suitable option for commercializing university-owned intellectual property. At the same time, the university requires that these activities be structured to avoid and/or minimize conflicts of commitment or interest that might arise relative to the employee’s university responsibilities. This policy balances the interests of both the university and its employees and complies with federal and state laws and regulations and university policies.

Scope

This policy applies to all paid academic staff members, whether part-time or full-time employees of the university, including, but not limited to, academic professionals, postdoctoral associates, and the faculty ranks of professor, associate professor, assistant professor (including those who are designated as research, adjunct, visiting or clinical), instructor, and lecturer.

Authority

Pursuant to the General Rules Concerning University Organization and Procedure, the vice president for research has authority, with the advice of the chancellors/vice presidents, and in consultation with the vice president for academic affairs and the campus vice chancellors for research, to establish operational guidelines and procedures for administration of intellectual property. The General Rules require disclosure and evaluation of intellectual property in which the university has an ownership interest and review of potential conflict of interest and commitment issues for commercialization activities involving university employees. The vice chancellor for research is responsible for overseeing the implementation of this policy, and the director of the Office of Technology Management, and the employee’s unit executive officer assist with the implementation of this policy.

Policy

The Office of Technology Management (“OTM”) is responsible for evaluating intellectual property developed at the university and determining the university’s commercialization strategy for such intellectual property. If the OTM determines that a start-up company or other entity in which a university employee or a member of the employee’s immediate family has a significant financial interest is a suitable means for commercializing university-owned intellectual property, OTM may proceed with negotiation of an option or license agreement involving university-owned intellectual property to such an entity. This policy applies equally to both start-up companies and more established entities in which an employee or a member of the employee’s immediate family has a significant financial interest. A university employee’s participation in any entity that is commercializing university-owned intellectual property must be consistent with the university Policy on Conflicts of Commitment and Interest (“COCI Policy”), including, but not limited to, the requirement that an employee disclose non-university activities that may present conflicts of commitment or interest. The university will not execute a license agreement permitting commercial use of university-owned intellectual property by a company in which any university employee or a member of the employee’s immediate family has a significant financial interest prior to the approval of a Conflict Management Plan pursuant to the COCI Policy. The COCI Policy provides guidance regarding what may constitute a significant financial interest.

Various federal and state programs provide support for the commercialization of technology developed at the university. The university often collaborates with entities that participate in such programs. For example, the university may act as a subcontractor for entities receiving grants to support the research and development activities through the federal Small Business Innovation Research (“SBIR”) or the Small Business Technology Transfer (“STTR”) programs. Participation by university employees or students in collaborative activities with such entities may create potential conflicts of interest if any university employee or a member of the employee’s immediate family has a significant financial interest in the entity.

University employees may not use university resources, including university personnel, working time, office space, supplies, equipment, or communications in support of the activities of an external entity, absent an approved agreement with the university to address such use. The COCI Policy requires that a university employee disclose participation in activities in support of an entity in which the employee or a member of the employee’s immediate family has a significant financial interest. Following such disclosure, the employee may be required to, among other mechanisms, enter into a Conflict Management Plan, disclose potential conflicts to other university employees and students involved in activities related to the company, and/or reduce his/her university appointment. The Office of Sponsored Programs (“OSP”) is responsible for negotiating agreements governing collaborative activities between the university and university employee affiliated companies, but OSP will not finalize any such agreements until after the approval of a Conflict Management Plan pursuant to the COCI Policy.

Definitions

Processes/Procedures/Guidelines

For guidelines for creating a Conflict Management Plan, please refer to http://research.illinois.edu/policies/CMP_Guidelines.cfm.

For information regarding the responsibilities and procedures related to intellectual property developed at the university, including guidelines regarding formation of start-up companies, please refer to

For information regarding procedures for disclosing, reviewing, and managing conflicts of commitment and interest, and the Policy on Conflicts of Commitment and Interest, please refer to Policy on Conflicts of Commitment and Interest

For information regarding reporting non-university activities, please refer to http://research.uillinois.edu/rnua

Contact

The Office of the Vice Chancellor for Research