Practical IP transfer examples
Here you can download model contracts with detailed commentary (originally published by SPRIN-D here) as well as explanatory documents (developed by Futury together with WSL Patentanwälte) for typical IP transfer agreements.
Patent Purchase Agreement
WSL Explained – Patent Purchase Agreement
Patent License Agreement
WSL Explained – Patent License Agreement
Patent License Agreement with Purchase Option
WSL Explained – Patent License Agreement with Purchase Option
Virtual Shares Agreement
WSL Explained – Virtual Shares
Example: Term Sheet for Patent License
We have summarised the most relevant processes for you
PROCESS GUIDE IP TRANSFER FOR SPIN-OFFS
PROCESS GUIDE HARVARD METHOD (IP TRANSFER FAST TRACK)
NEGOTIATING TECHNOLOGY TRANSFER AGREEMENTS
Use cases for IP transfer
Source: European Patent Office
DERMIS PHARMA
Turkey: Biotech
DERMALIX:INNOVATION IN WOUND HEALING
Four female researchers from Ege University developed Dermalix, a novel wound dressing designed to accelerate healing for chronic wounds, particularly diabetic foot ulcers. Early IP protection, secured through the university’s technology transfer office, was key when initial licensing efforts failed. Participation in a start-up acceleration program led to the founding of Dermis Pharma, attracting VC funding for clinical trials. A strategic partnership with pharma leader Abdi İbrahim enabled commercialization, bringing Dermalix to market and offering a new treatment option for millions of diabetes patients worldwide.
PERCEIVE3D
Portugal: Medical Tech
DISRUPTINGSURGICAL NAVIGATION
Spinning out from the Portuguese University of Coimbra proved to be the best way forward for Perceive3D to commercialise a promising technology in the medical imaging area. Due to the small size of the local market, broad patent protection proved crucial to both targeting international markets and securing continuous investment during the long development and approval phases leading up to commercialisation of the technology.
OncoQR
Austria: Biotech
BOOSTING THE IMMUNE RESPONSE TO FIGHT CANCER
Two entrepreneurial scientists with business experience have created a technology platform for immunology vaccines that make cancer and allergy treatment possible. For product development and technology commercialisation, they founded two startups, S-TARget therapeutics and OncoQR. Thanks to a robustpatent portfolio and an IP strategy supporting their business case, they followed several commercialisation pathways, including investments in own research and development, collaborative development and technology out-licensing. IP was essential for gaining revenues early on through licensingas well as for attracting funding. This was crucial given the longtime-to-market periods that are typical in biotechnology.
FOS4X SENSORS FOR BLADES
Germany: Sensor-Tech
STRESS REDUCTION FOR WIND TURBINES
Encouraged by an IP-savvy university institute director with an entrepreneurial spirit and positive feedback from industry sponsors, a team of young researchers decided to bring their fibre optic measurement technology to market. Access to the university’s patent portfolio and research facilities, together with the business experience acquired by one of the co-founders, paved the way to the creation of fos4X. The young company decided early on to focus on applications for wind turbines, and their patents turned out to be crucial in a market of mostly large players. The company was acquired in 2020 by PolyTech on the basis of its innovative technology and IP portfolio.
IP-Scorecard
Simply answer a few questions to gain a comprehensive understanding of the value of your intellectual property.
IP-SCORECARD LIFE SCIENCE
IP-SCORECARD NON-LIFE SCIENCE
Download the Excel file and follow these steps:
- Work through the questions and explanations in the first worksheet
- Review the additional scoring notes in the second worksheet and enter your scores from 0–10 in the first worksheet
- Review the evaluation in the third worksheet and use the results in consultation with the IP transfer officers at your institution
Disclaimer: “This revised version is based on the original IP Scorecard by Stifterverband, published under the CC BY-NC-SA 4.0 licence. The original version is available here. The recommendations presented here for a model of market-based valuation of intellectual property (IP) in the spin-off process do not constitute legal advice and cannot replace it.”
Guidelines, policies and recommendations
GUIDE APPLYING FOR GERMAN PATENT
GUIDE APPLYING FOR EUROPEAN PATENT
GUIDE APPLYING FOR INTERNATIONAL PATENT
EXAMPLE OF A EUROPEAN PATENT APPLICATION: BICYCLE PEDAL DEVICE
Checklists and overviews
CHECKLIST FOR THE INITIAL MEETING BETWEEN THE FOUNDING TEAM AND THE TRANSFER RESPONSIBLES OF THE SCIENTIFIC INSTITUTION
OVERVIEW OF IP TRANSFER OPTIONS
IP-Wiktionary
| Term | Description |
|---|---|
| ArbnErfG (German Act on Employee Inventions) | Legislation governing the rights and obligations of employees and employers in respect of inventions made by employees in the course of their employment. |
| Arm's length standard (Marktüblichkeit) | A transaction on price terms that would be agreed between independent contracting parties. |
| Blockbuster | In the pharmaceutical industry, a drug with annual sales of more than one billion dollars. These drugs represent breakthrough therapies for widespread or hard-to-treat diseases. |
| CAPM (Capital Asset Pricing Model) | A financial model describing the relationship between the expected risk and the expected return of a security. |
| Change of control | A change in the control or ownership structure of a company, particularly in financing rounds. |
| Complex of inventions (Erfindungskomplex) | Where a product is protected by several patents, royalty rates are reduced proportionally to avoid overburdening the licensee. |
| Copyright-protected content | Copyright-protected content grants exclusive rights to works such as music, literature or software. |
| Dilution | Reduction of a shareholder's percentage stake through an increase in share capital. |
| Discount factor | Factor used to discount future cash flows to their present value. The discount factor is made up of the general interest rate level and the risk premiums for the project in question. |
| Discounted cash flow (DCF) | Method for valuing investments by discounting future cash flows. |
| Dormant patents (Schubladenpatente) | Patents that have been filed and often granted but are not commercially exploited. |
| Financing round | Process in which corporations raise equity by issuing new shares. |
| Freedom-to-operate (FTO) | An analysis assessing whether a planned business activity is free of legal obstacles. |
| Goldscheider rule | Approach for determining appropriate royalties on the basis of average profitability in a market. |
| Know-how | Commercially exploitable information protected by appropriate security measures. |
| Licence (exclusive and sole) | Permission granted by a rights holder to a third party to carry out certain acts that are normally reserved to the rights holder. |
| Licence analogy method (Lizenzanalogie) | Procedure for determining comparable market-standard royalty rates for an IP right. |
| Net present value (Kapitalwert) | Present value of an investment after discounting future cash flows with a market-standard discount factor. |
| Organic growth business models | Where the conditions for a clear venture case are not met, alternative forms of financing can be examined. |
| Patent | An intangible property right granting a monopoly on a commercially usable technical invention. |
| Patent coverage | Describes the countries and regions in which the IP rights have been filed and granted. |
| Patent troll | A company that collects patents in order to sue others without producing anything itself. |
| PCT application | An international patent application procedure that enables patent protection in several countries with a single application. |
| Prior art | All information or technologies that were publicly available before a given date and constitute the state of the art. |
| Professor's privilege (Hochschullehrerprivileg) | Until 2002, a privilege in Germany that assigned inventions made by university teachers in the course of their work to their own ownership. |
| Public budget law (Haushaltsrecht) | Requirement that publicly funded assets may not be disposed of below their value. |
| Right of first refusal (Vorkaufsrecht) | A contractually granted right to acquire an object or right ahead of other interested parties. |
| Royalty base (Bezugsgröße) | Principle of the 'characteristic contribution' for determining |
| Royalty range (Lizenzrahmen) | Valuation principle for narrowing down known royalty rates during the valuation process. |
| Royalty tapering (Abstaffelung) | As revenues rise, the value contributed by the invention decreases while the value contributed by the company increases. It is therefore standard market practice to price in a discount for rising product revenues in the second half of the patent term. |
| Spin-off | An academic spin-off that commercialises intellectual property from research work. |
| State aid law (De minimis / GBER) | Where universities or research institutions support spin-offs with public funds, EU state aid rules apply. They set the economic limits within which agreements must stay. |
| Supplementary protection certificate (SPC) | An option to extend the patent term for pharmaceuticals and agrochemicals by five years to compensate for the marketing authorisation process. |
| Term sheet | A non-binding agreement setting out the basic terms of a transaction. |
| Venture capital (VC) | Equity provided by investors to finance high-risk spin-offs with high growth potential. |
| Venture capital case | Venture-capital-funded start-ups with a patent-based business model and high innovation potential. |
| Virtual shares (Virtuelle Beteiligung) | A purely contractual participation in the spin-off without shareholder rights. |
| Virtual Stock Option Plan (VSOP) | A compensation scheme in which participants share in the increase in company value without shares being transferred. |
Contacts at Your University
Contacts at the transfer offices of Hessian universities and research institutions.
Any questions?
Disclaimer & Sources
The IP Toolbox is designed to give researchers easy access to the topic of intellectual property and to make the IP transfer process more transparent and easier to understand. Much of the content is based on information and tools from external sources, which are cited and linked accordingly. The IP Toolbox makes no claim to being complete or correct in every case of IP transfer and offers no legal warranty. Details should always be discussed with the responsible offices at the universities or with lawyers and experts specialising in the subject. If you come across incorrect information or have suggestions for improving the IP Toolbox, please use the contact form below.
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The program is conducted by Futury with the support of other relevant ecosystem partners and is supported by the Hessian Ministry for Economic Affairs, Energy, Transport, Housing and Rural Affairs.
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