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Licensing practices of UPM patented inventions

Licensing activities of the UPM`s invention will begin after the invention got IP protection (patent/industrial design/copyright SD/new plant variety). All the R&D that has the potential to be commercialized will be supported by the university to filing for IP.

After the invention got patent pending filing numbers by the Intellectual Property Corporation of Malaysia (MYIPO), we will start the promotion activities to approach the industry to license UPM technologies. UPM will make sure the invention securely protected before we approach the industries to prevent others from infringes the invention.

If there is potential industries want to license the invention or have an interested to look into license opportunity, we will make sure the invention does the IP filing process first before the further discussion about licensing negotiation. The overall cost for filing IP processed will take into consideration in licensing fee and royalty negotiation.

Initial discussion with the industry will be brief about the invention. The inventor will not disclose the important part of the technology and NDA signing is a must. The IP status will be informed clearly before further licensing term sheets will be discussed with the industry.

After the protection, Promotion and Marketing Department under Putra Science Park, UPM (formerly known as UPM Innovation and Commercialization Centre) will promote the invention through the various channels such as website innovation directory, innovation directory book, exhibition, UPM Innovation Open Day, press conference, press release, advertisement on newspaper/magazine/business directory, industry networking session thru seminar/ exhibition/ visiting and also from the inventor networking.

In UPM practices, NDA would sign when the second or third discussion with the interested parties. The first discussion is about the ice-breaking session between the industry, researcher, and UPM TTO (Putra Science Park -www.sciencepark.upm.edu.my) and a brief discussion on how collaboration with the university. Sometimes the discussion will not be ended with commercialization but can change to contract research or only consultation from our expertise.

If there are two licensing choices as licensees between a college-based start-up company created based on the invention or an existing corporation, UPM will prefer to award the license to the existing corporation because of several factors;
1. Strength of the capital and market controlled
2. Capability and commitment from the company to fulfill the technology gap in up-scaling the technology

University Start-up Company did not have capital money to pay for the licensing fees and still need to raise its funding from government funding and bankers. We will not prefer University Start-up Company in this scenario but not if the Start-up Company from the existing corporation itself.

 

Article by

Asrizam Esam
Research Officer
Putra Science Park
Universiti Putra Malaysia

Date of Input: 15/11/2020 | Updated: 26/11/2020 | asrizam

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