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Technology Transfer Q&A

How is the attribution of licensed technology determined?

 

For the MOST research projects, the attribution of results is clearly stipulated in the research project’s budget approval sheet.

 

The results of the MOST industrial-academic cooperation projects shall be attributed in accordance with the industrial-academic cooperation agreement signed between NTU and the enterprise.

 

Results of other research projects funded by government agencies or enterprises are attributed in accordance with the agreement signed between NTU and the government agency or enterprise.

 

Research results obtained using resources of the University are attributed to NTU.

What forms do I need to fill out for technology transfer?

 

A: When a professor submits a technology transfer application, the Technology Transfer Application Form for Professors, Recommendation Form, and Conflict of Interest Disclosure should to be filled out and submitted to the director or head of the college/department to be for approvaled and stampinged, and then submitted to the Center of Industrial-Academic Cooperation. The Center will issue announcements for technology inventions or organize tech conferences and events to find prospective partners. When an enterprise in need of technology transfer expresses interest, it will be asked to fill out the the Technology Transfer Application Form & Development Plan & Technology Transfer Conflict of Interest Disclosure. Meetings will then be arranged to discuss relevant topics such as conflict of interest, enterperise selection, and technology transfer pricing. When negotiations for the agreement are completed, the technology transfer agreement will be signed (cf. Sample Technology Transfer Agreement), and other precedures will take place, including the distribution of technology licensing fees, the follow-up on the implementation of technologies, royalty payments, etc.

How are technology transfer license fees distributed?

 

The license fees and royalties of R&D results are distributed according to the percentage rates detailed below after deducting the amounts paid to the following parties: the funding agency, costs incurred by the University and the inventor for their costs (including patent filing fees), and staff members who contributed to the promotion efforts (5% maximum).

 

(1) For cases of patent licensing, the distribution rates are: 20% for the University, 70% for the inventor, and 10% for the inventor’s affiliated unit (college/department/graduate school).

 

(2) For projects defined in Item 3 of Article 7, Paragraph 1, Subparagraph 1, the distribution rates are: 10% for the inventor’s affiliated unit (college/department/graduate school) and 20% for the inventor; the remaining 70% shall be divided between the University and the inventor according to their ratio of investment.

 

(3) For non-patent licensing projects, the distribution rates are: 40% for the University, 50% for the inventor, and 10% for the inventor’s affiliated unit.

 

(4) If the University’s Conflict of Interest Review Committee has decided otherwise, the distribution will be conducted in accordance with the Committee’s decision. The rates defined in Subparagraphs (1), (2), and (3) shall not apply in such cases.

 

For patent licensing projects whose patent was filed on or before April 15, 2012, the following rules will apply: For technology results obtained using the University’s resources, the revenues generated from technology transfer shall be distributed in accordance with the rules detailed below after deducting 20% to be reimbursed to the funding government agency (if applicable) and patent filing related fees.

A. For patent applications filed with the University’s approval, the license fees and royalties are attributed to NTU. The University shall then distribute the revenues in accordance with Article 7 and the distribution rates selected by the inventor. The rates are detailed in the following chart.

Plans for patent filing fees sharing

Revenue % attributed to the University

Revenue % attributed to the inventor

Revenue % attributed to the inventor’s affiliated unit (college/department/graduate school)

Note

(The percentage of patent filing fees that the inventor is required to contribute)

A

70%

20%

10%

5%

B

40%

50%

10%

10%

C

30%

60%

10%

30%

D

20%

70%

10%

50%

 

B. If the inventor submitted patent filing independently after following the procedure to inform the University, patent assignment is required when technology transfer takes place. License fees revenues shall be distributed after deducting patent filing and relevant fees paid by the University, inventor, and the inventor’s affiliated unit. However, the deducted amounts shall not exceed 40% of the total license fees of each technology transfer project. If the deducted amounts are insufficient to cover the costs, deductions will be made again from the license fees of subsequent projects prior to revenue distribution.

Is it necessary to obtain patents for research results before they may be licensed?

 

It is not necessary to obtain patents for research results before they may be licensed to third parties for use. Research results may be licensed regardless if the inventor intends to file for patent or not, or if patent is pending. The difference is in the manner of protection. Patents are protected by patent law. In other situations, the intellectual property may be protected by means of NDAs or trade secret. In all cases, however, technology transfer is permitted.

Are technology transfer licensing conditions fixed? What are the principles and who decides them?

 

The content and industry characteristics are different for each technology. As such, the conditions forof technology transfers differ from case to case. NTU’s Administrative Guidelines regarding Research and Development Results and Technology Transfer define the basic principles as follows: compensation based, non-exclusive license, and the prioritizing of domestic enterprises as licensees. However, conditions may be negotiated under specific circumstances. The following are conditions commonly included in the agreement.

 

 

1 License fees:
(1) License fees may be paid in a lump sum or installments after the agreement is signed. License fees are determined by two main factors: the costs (such as funding for the project) and marketability (such as the value of output of future products or relevant products).

 

(2) It is recommended that professors discuss with the Center of Industrial-Academic Cooperation and allow the manager to represent them in negotiations with enterprises.


2.Royalties

(1) Royalties may be paid in a lump sum, or they may be paid after the product is launched and calculated by applying a royalty percentage to the gross sales.

 

(2) The royalty rate is generally dependent upon the industry and product characteristics.

 

 (3) Royalties paid in a lump sum allow for faster returns. On the other hand, if the product has a longer life cycle or a larger market share, opting for a royalty percentage rate may generate larger amounts of royalties. Each option has its advantages and may be chosen based on product and industry characteristics.

 

3. Product launch deadline

The objective of a technology transfer, from the university’s standpoint, is to facilitate the realization or commercialization of R&D results. In order to prevent companies from using technology transfers as a means of blocking competitors from gaining access to certain technology or not making an effort to commercialize the transferred technology, product launch deadlines are stipulated in the agreement.

 

4. The use and rights protection of the university name (logo)

To prevent the abuse of the university’s name, logo, or relevant images and texts, the Office of General Affairs has established the Guidelines for the Use and Management of University Logo.

When should I opt for industrial-academic cooperation? When should I opt for technology transfer?

 

  1. If there are not yet completed research results that have yet to be completed for the technology wanted by the enterprise, the professor may work with the enterprise via industrial-academic cooperation projects.
  2. The Ministry of Science and Technology (MOST), Council of Agriculture, and other government agencies have set up (regular or irregular) industrial-academic cooperation projects. Interested researchers may refer to relevant websites of agencies in charge and submit applications. (Please contact the Division of Research Project Affairs for details on the application dates, deadlines, and process.)
  3. If the technology needed is the result of completed research, it may be licensed to a company for use via technology transfer.

When can I submit an application for technology transfer?

 

A: Professors may submit an application for technology transfer during the following stages:

 

1. When research results are produced: Professors may submit technology transfer applications immediately when their research projects produce results. The Center of Industrial-Academic Cooperation will begin the process of promotion and partner matching (via tech conferences or invention conferences organized by the government, etc.) after the application is received.

 

2.When patent application is filed: Professors may submit the patent application and technology transfer application simultaneously. The Center of Industrial-Academic Cooperation will assist professors in the promotion efforts and partner matching for their technology.

 

3.When talks with a specific enterprise regarding technology transfer are under way: Professors may submit technology transfer applications to the Center of Industrial-Academic Cooperation when they are in talks with a specific enterprise regarding technology transfers. The Center will assist professors and make its best effort to help facilitate the process of technology transfer process, including organizing meetings for enterprise selection/pricing and assisting in the negotiations and signing of technology transfer agreements.

What are things I should be aware of when signing an agreement for the MOST industrial-academic cooperation projects?

 

1. Deadlines must be met for the MOST industrial-academic cooperation projects. Please follow the University’s procedures to avoid your project being canceled due to missed deadlines.

 

2. To ensure the smooth and successful signing of the agreement, it is recommended that the University’s sample agreement approved by the MOST be used.

 

3.The MOST has strict restrictions regarding licensing conditions. Any changes to the agreement must be submitted to the MOST for review and approval before the deadlines so as not to delay the progress of projects.

 

4. Questions regarding administrative processes other than agreement signing should be directed to the Division of Research Project Affairs. TEL: 02-3366-3268