The following agreements are commonly used by AzTE and our industry partners:
A non-disclosure agreement (NDA), also known as a confidentiality agreement (CA), confidential disclosure agreement (CDA), proprietary information agreement (PIA), or secrecy agreement, is a legal contract between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to or by third parties. It is a contract through which the parties agree not to disclose information covered by the agreement. An NDA creates a confidential relationship between the parties to protect any type of confidential and proprietary information or trade secrets.
These give the company the right to review a technology for a period of time to ascertain its practicality and value. During the option period, AzTE agrees to keep open the availability of a license for the company reviewing this technology. A one-time fee is charged.
A sponsor option agreement is the option agreement for inventions that may be made during the course of ASU research sponsored by a corporate vendor.
Material Transfer Agreement
These permit biological materials and similar specimens owned by ASU to be transferred to researchers at other universities or companies.
These are special agreements between ASU and other universities, federal labs, non-profit foundations and industry. These agreements permit AzTE to license technologies on which individuals from other organizations are co-inventors.
In order to develop a technology for commercialization, a license agreement gives you the ability to use ASU's rights under its intellectual property. AzTE license agreements typically include the following elements, although each transaction is negotiated on a case-by-case basis:
- License fee
This fee is paid at the time the license agreement is signed. The fee amount depends on the market value of the technology.
AzTE expects to receive equity in start-up companies based on ASU technology.
- Patent reimbursement
These fees reflect the costs that are incurred to patent the technology. If foreign patents are sought for the technology, the fees may be higher to reflect this.
- Development period
- Before the license agreement is finalized the prospective licensee must submit a brief technology development plan.
- Quarterly development reports are required. These reports help to document that active development of a technology is taking place, a requirement for licensing federally-funded research.
- In projects with long development timetables, such as pharmaceuticals, certain progress milestones may be specified along with appropriate milestone payments. These help reduce initial license fees on high-risk projects since these milestones payments are only made if development continues successfully.
These fees are paid when products or services using the technology are sold. They may be calculated on a percentage-of-sales or fee-per-unit basis, depending on the circumstances.
- Minimum royalty
At the end of the development period, AzTE expects a minimum royalty each year. This is set at a relatively low amount compared to the expected royalties. Any royalties actually earned offset the minimum royalty, so the minimum royalty is normally not an additional fee. These minimums are designed to encourage the continued active marketing of the technology.