Licensing out of universities and research institutes
University technology transfer offices typically license patents and know-how to startups or established companies, often in exchange for equity, upfront fees, milestone payments, and royalties. When the research was federally funded, the government keeps certain rights, and an exclusive licensee may face a preference for substantial U.S. manufacturing of products sold in the United States unless a waiver is obtained. Universities also tend to reserve rights for continued research and publication, and their positions on indemnity and warranties are often firmer than a commercial counterparty's. Diligence obligations, such as development milestones, can let the university terminate or narrow an exclusive license if progress stalls.
Moving technology across borders
Transfers to affiliates or partners outside the United States can raise export control questions, because technical data and source code can be controlled even when no physical item ships. Some transactions with foreign investors may also draw review by the Committee on Foreign Investment in the United States, depending on the technology and the structure of the deal. Tax treatment of cross-border licensing between related companies is a separate issue that usually involves transfer pricing advisers. On the contract side, the agreement should say which law governs, where disputes will be resolved, and how improvements made by the receiving party will be owned or shared.
Know-how is the hard part
Patents can be listed by number, but much of what makes a technology work is unwritten experience. Agreements that transfer know-how should describe the documents, training, and technical support to be provided, along with confidentiality obligations that outlast the deal. Disputes often arise over whether the transfer was complete and whether the receiving party later used the know-how beyond the licensed field. When we review a proposed transfer, we look at what is being transferred, the funding and ownership history, and the commercial goals on each side, then mark the terms that most often lead to disagreement.
