Transferring Technology from Caltech/JPL to the Commercial Sector
The primary mission of the Office of Technology Transfer (OTT) is to promote and facilitate the transfer of useful technologies to the commercial sector so that the public can directly benefit from the ingenuity and creativity of our outstanding researchers. Providing access to new and improved electronics, instruments, devices, drugs, services, and software all contribute to improving the quality of people's lives. OTT strives to find the most efficient ways to take a concept developed by our inventors and turn it into a product useful in everyday life.
Founded in 1995, OTT works to effectively commercialize technology developed at Caltech and the Jet Propulsion Laboratory (JPL). Specifically, OTT assists the faculty with intellectual property, evaluates inventions, manages the Caltech/JPL patent portfolio, negotiates technology licenses and assists entrepreneurs with the creation of startups. For more information on Caltech’s technology transfer process, please go see: http://ott.caltech.edu/commercialization/
What Intellectual Property Rights Does Caltech Hold?
In 1980, the U.S. Congress passed Public Law 96-517, the Bayh-Dole Act, which provides that universities have the right to elect title to inventions resulting from government-sponsored research at universities. JPL is covered by the Bayh-Dole Act because Caltech operates JPL as a Federally Funded Research and Development Center (FFRDC).
The Bayh-Dole also provides for a free, paid up license to the United States government to make, use, and have made any federally funded inventions. This free license also extends to government contractors and other research institutions that perform work for the government. Therefore, OTT focuses its attention on uses of the JPL-developed technology that have applications outside of government use, particularly when deciding which inventions to patent.
Licensing from Caltech
OTT strives for a win3 – a winning combination for Caltech/JPL, our researchers, and the general public. Caltech therefore takes a flexible approach to licensing based on the particular circumstance of the agreement at hand. For exclusive licenses, Caltech typically requires an up-front fee, payment of patent expenses, a defined field of use, a royalty on licensed products, minimum annual royalties, and diligence in developing licensed products. For startups, we normally waive the up-front fee in return for equity in the startup.
For more information on Caltech’s startup process, please go to http://ott.caltech.edu/makeithappen/
Before an exclusive license is executed, JPL at OTT will send an email to the known stakeholders in order to notify them that a license is being executed.
Caltech has endorsed the “In the Public Interest: Nine Points to Consider in Licensing University Technology” document, which provides guidelines for licensing in the public interest. It should be noted that each licensing situation is unique, so these guidelines are viewed with an eye toward flexibility for each situation.
It is customary for OTT to receive monetary compensation from licensees (e.g., licensing fees, milestone payments, royalty payments and/or equity) in consideration of granting a license. Caltech shares this income with the inventors in accordance with the Caltech Royalty Sharing Policy, providing appropriate recognition and rewards for their hard work and ingenuity.
In addition to the intellectual and personal satisfaction and personal financial rewards that come with seeing your inventions licensed to industry for commercial development, a licensing agreement may also be coupled with significant funding for the continuation of your research.