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UTRF’s Express Licensing program making agreement execution for software, copyright, and research tools easier

(EDITOR’S NOTE: The following article first appeared in the May issue of the UT Research Foundation Newsletter.)

The University of Tennessee Research Foundation (UTRF) is making it easier to license software, copyright, and research tools. UTRF’s Express Licensing program, called E-Licensing, streamlines the licensing process, saving time and advancing the reach of innovations developed at the University of Tennessee (UT).

Traditional licensing is a good fit for early-stage technologies that have a potential for commercial and industrial applications. The process typically involves filing for a patent application, marketing the technology, and engaging in discussions between the industry partner and UTRF.

However, tools that are ready to use – such as software, copyrighted materials, antibodies, crystals, etc. – may be overlooked if there is no existing commercial market for them. But many of these technologies and materials could be used by other academic institutions and researchers in their own labs. In fact, federally funded agencies, such as the National Institutes of Health, require institutions to make research tools widely available to advance research and scientific study. UTRF developed E-Licensing to meet this need, but it is not a one size fits all answer to commercialization. UTRF evaluates each innovation disclosure carefully to determine its fit with E-Licensing. These selected technologies may not have a wide commercial market but still, have a great benefit because of their value in the research market.

UTRF’s E-Licensing is a straightforward ‘click-through’ licensing process. Prospective licensees (who must be authorized representatives of their respective institutions) go to the E-Licensing website, review the licensing agreement, accept the predetermined terms, and follow the click-through process to order and pay the one-time, non-refundable license fee. No negotiations are necessary because the licensing terms are set, and the material can be shipped out immediately. Since the tools offered through E-Licensing are for research purposes only, UTRF retains the right to offer commercial licenses for the same tools if the opportunity presents itself.

Obtaining a license through E-Licensing saves time, money, and effort for other researchers, allowing them to focus on their research and not worry about creating a specific tool or material from scratch. It’s also a win for UT researchers who have developed a ready-to-use technology or tool that can be shared with other academics or researchers. Here’s an example of how it works in practice:

TgMAT (Toxoplasma gondii whole-cell antigen for modified agglutination test) provides antigens and testing tools that can be used to detect whether an animal or human is infected with the T. gondii parasite. Instead of investing time and energy in creating their own kit in the lab, outside researchers can license the kits from UTRF and get a jump start on their research. In return, UT researchers receive royalties and gain valuable market knowledge of current research direction and demand.

The launch of E-Licensing not only elevates the visibility of UTRF and UT research but can result in increased traction for licensing UT research products. There is also the potential that new applications for research materials could one day result in commercial licenses.

“Oftentimes, you will have technologies that don’t fit the traditional model of licensing, but that does not mean they wouldn’t benefit other researchers,” said UTRF Vice President Dr. Maha Krishnamurthy. “The more we get technologies out of the lab, the more other researchers can use them. And who knows? Someone may come up with an application that we never dreamed about.”

In addition to TgMAT, UTRF offers a handful of other research tools through its E-Licensing system. For example, there is a fetal monitoring app that can be downloaded and used to teach nurses how to address fetal distress by simulating real-world situations. There is also a collection of materials from the Surrogate Nuclear Material and Production Program that can be used to simulate a variety of scenarios to help develop and validate nuclear forensic analyses. Also available from UTRF via E-Licensing are 2D crystal materials from the Tennessee Crystal Center (TENN XC) that can be used in a wide range of research applications.


Tom Ballard

By Tom Ballard, Chief Alliance Officer,
Pershing Yoakley & Associates. P.C.

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