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WSU Research License Options

Pre-Negotiated License Options

These are some of the licensing options available, but terms can be altered on a case-by-case basis

WSU is launching a new program to provide sponsors with more options to use the results of sponsored research in ways that meet their business needs. The goal is to streamline execution of sponsored project agreements, reduce financial uncertainty for sponsors, and minimize time spent on licensing negotiations.

This new program allows industry sponsors and WSU researchers to choose from a variety up-front licensing options for intellectual property that results from sponsored research projects, as an alternative to the traditional model of negotiating after the intellectual property is developed.

Always Provided – Research Use License and Option Period

The WSU standard sponsored project agreement provides to Sponsor the following:

(1) a non-exclusive, paid-up, royalty free license to use foreground/project IP within Sponsor’s organization for any internal, non-commercial purpose; and
(2) an option to exclusively negotiate a commercial use license to WSU Intellectual Property and/or WSU’s ownership interest in Joint Intellectual Property for a period of 6 months from the project end date.

Contracting Acceleration Program (CAP)*

Option 1: Non-Exclusive, Term-Limited

  • Non-exclusive, commercial use license for a two year period.
  • No Royalties

Greater of $3,500 or 5% total project cost

Option 3: Exclusive, Per Field of Use

  • Exclusive commercial license within a specified field of use.
  • Sponsor is responsible for patent costs.
  • 1% royalty on cumulative net sales over $20,000,000

Greater of $15,000 or 15% total project cost

Option 2: Non Exclusive, No Term-Limit 

  • Non-exclusive, royalty-free commercial use license.
  • No Royalties

Greater of $7,500 or 10% total project cost

Option 4: Exclusive, All Fields

  • Exclusive commercial license for all fields of use.
  • Sponsor is responsible for patent costs.
  • 1% royalty on cumulative net sales over $20,000,000

Greater of $50,000 or 30% total project cost

*Streamlined licensing options are subject to the following terms and conditions:

  1. License Rights: (a) These options are not available on projects that use co-mingle funds from federal sources or WSU funds that are subject to restrictions; (b) The option under track 1, begins with the disclosure submitted to Sponsor by WSU and continues for three (3) month form the date of disclosure; (c) The option under tracks 2-5 is valid for thirty (30) days from the date of execution of the Agreement; (d) The option under tracks 2-5 once exercised needs to be made effective by execution of a revised Appendix by both parties within thirty (30) days of the date of option exercise.
  2. Patent Management: (a) In cases where there is a for-fee commercial NERF (tracks 1 and 2), WSU would notify the Sponsor of the intent to file. The Sponsor has no further obligation to retain the NERF or for any additional fee; WSU would be responsible for patent expenses going forward but would also retain the rights to stop prosecution for any reason; (b)For tracks 3 and 4, Sponsor shall be responsible for and pay all past and future costs and expenses incurred by WSU for the preparation, filing, prosecution, issuance, and maintenance of the Foreground/Project Intellectual Property within thirty (30) days of receipt of an invoice from WSU. Sponsor shall be responsible to keep WSU fully apprised of the “small entity” status of Sponsor with respect to the U.S. patent laws and with respect to the patent laws of any other countries, if applicable, and to inform WSU of any changes in such status, within thirty days of any such change.
  3. Net Sales: Net Sales for Products and/or Processes based on Foreground/Project Intellectual Property that are sold by Sponsor or its Affiliates will be the actual gross invoice price of Products and/or Processes (regardless of uncollectible accounts) less usual trade discounts actually allowed, any outbound customs, duties and transportation and insurance costs paid or allowed; allowances and credits because of returns, or sales taxes. The Net Sales for Products and/or Processes that are transferred to a third party for promotional purposes without charge or at a discount shall be the average price of that type of Product and/or Process during the applicable calendar quarter. The Net Sales for a Product and/or Process that is produced for a third party or sold to a third party under a per sale contract and/or lump sum contract will be the per sale contract price or the lump sum contract price, as the case may be, or any consideration or service fees received for product provided or services performed less any outbound transportation costs paid or allowed; allowances and credits because of returns, or sales taxes.
  4. Background IP (BIP): BIP is not automatically included. License to BIP can be negotiated on TBD terms subject to availability.
  5. Reserved Rights: WSU reserves to itself the right to make, use and sell Products and/or Processes developed under the Foreground/Project Intellectual Property for research purposes, including research for any sponsors. WSU also reserves the right to license the technology, for non-commercial purposes and without further right of sublicense, to other non-profit institutions and/or for humanitarian use.
  6. Development and Diligence: Sponsor agrees to and warrants that: it has, or will obtain, the expertise necessary to independently evaluate the inventions of the Foreground/Project Intellectual Property; it will establish and actively and diligently pursue the development to the end that the inventions of the Foreground/Project Intellectual Property will be utilized to provide Products and/or Processes for sale in the retail market; and following the end of the Project the Sponsor will provide a written development report every six (6) months ending on June 30, and December 31, and until the date of first commercial sale of Products. All development activities and strategies and all aspects of product design and decisions to market and the like are entirely at the discretion of the Sponsor, and Sponsor shall rely entirely on its own expertise with respect thereto.  WSU’s review of Sponsor’s development plan is solely to verify the existence of Sponsor’s commitment to development activity and to ensure compliance with Sponsor’s obligations to commercialize the inventions of the Foreground/Project Intellectual Property. Sponsor agrees that the first commercial sale of products to the retail customer shall occur within five (5) years from the end of the Project or this License shall terminate unless both parties agree to extend the period.
  7. Warranty and Disclaimers: WSU MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO THE VALIDITY OR SCOPE OF THE FOREGROUND/PROJECT IP OR USE, SALE, OR OTHER DISPOSITION BY SPONSOR, OR ITS VENDEES OR OTHER TRANSFEREES OF PRODUCT INCORPORATING OR MADE BY USE OF THE INVENTIONS/FOREGROUND/PROJECT IP LICENSED OR OPTIONED UNDER THIS AGREEMENT.
  8. Release and Indemnity: In consideration for receipt of the option or license to Foreground/Project Intellectual Property, Sponsor hereby agrees to release WSU from any liability arising from Sponsor’s exercise of rights under any such option/license including United States export control laws and regulations; and to indemnify WSU for any third party claims against WSU resulting from Sponsor’s exercise of rights under any such option/license.
  9. Termination: The term of the license continues until the earlier of the date that (a) no Foreground/Project Intellectual Property remains enforceable or no know-how or materials continue to be used in making the Product or Process or (b) the payment of earned royalties, once begun, ceases for more than two (2) calendar quarters.
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