New MN-IP option offers royalty-free licensing

Since it debuted in 2011, the nationally recognized Minnesota Innovation Partnerships program, or MN-IP, has set the University of Minnesota apart. This multi-faceted program has business-friendly terms that have helped forge more than 175 research agreements and several technology licenses between the U and industry partners.

MN-IP Create previously offered two options for companies looking to sponsor University research and license the intellectual property that results: Option A, which allows companies to pre-pay a portion of a research agreement in exchange for an exclusive license to the technology developed; and Option B, which has no upfront fees and waits until IP is developed to negotiate a royalty-bearing license.

Now, MN-IP Create is expanding to offer a third option. “Option C” allows companies to pre-pay 10 percent of a sponsored research agreement or $10,000, whichever is greater, in exchange for a non-exclusive, worldwide license to all inventions that arise from the project. The sponsoring company does not pay any royalties, annual minimums or other technology commercialization fees on the license. The company also has the opportunity to later negotiate an exclusive, royalty-bearing license if desired.

Option C expands the range of choices available to companies interested in partnering with the University, making it easier to do business by laying out terms in advance and shortening negotiations.

“After listening to business needs, we set to work designing a new option that would better fit certain industries, such as the petrochemical, semiconductor and software sectors,” said Brian Herman, Ph.D., the U’s vice president for research. “MN-IP agreements have garnered a reputation for allowing companies to tap the University’s world-class research infrastructure, equipment and talent, while developing new technology that can grow our understanding of the world and help solve large societal issues. We are excited to see what new industry partnerships and research discoveries will grow from Option C.”

In all MN-IP Create agreements (Options A, B and C), the sponsoring company still manages and directs all patenting activities and retains the rights, free of charge, to use data that arises from the research project. University-owned background IP is not automatically included, but the U will work closely with the sponsoring company to resolve any requests.

In addition to MN-IP Create, the Minnesota Innovation Partnerships program also includes MN-IP Try and Buy, which lets businesses take previously completed university research for a test drive to gauge its commercial potential. Learn more about both programs or contact Leza Besemann at besem007@umn.edu to discuss partnership opportunities through the program.