Technology Transfer and Commercialization
Isaac Molnar, Intellectual Property Counsel

Isaac Molnar

Intellectual Property Counsel
Phone: 614-466-4066

Business > Commercialization

Technology Transfer and Commercialization

The Ohio Attorney General strongly supports commercialization of State university research and innovation through technology transfer from Ohio universities to industry.  This webpage is designed to facilitate and expedite those commercialization activities.  Questions, comments and/or suggestions should be directed to Isaac Molnar.

The Negotiation Process

Template Agreements

Legal Resources

State University Technology Transfer Offices

Non-Disclosure Agreements

The first formal step of the commercialization process is typically entering into a mutual Non-Disclosure Agreement (“NDA”).  The NDA facilitates the University-Industry relationship by allowing the State university and industry partner to share confidential information without fear of disclosure.

The Ohio Attorney General, Ohio Board of Regents and various Ohio technology transfer officers have developed a template mutual NDA.  This NDA is approved by the Ohio Attorney General.

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Expediting the Negotiation Process

An industry partner can take the following steps to expedite the negotiation process with State university technology transfer offices.

  • Understand the Basics
  • Request Negotiation Parameters
  • Focus on Negotiable Terms/Use Template Agreements
  • Understand State University Technology Transfer Offices
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Understand The Basics

An industry partner can review the appropriate template agreements provided on this website (NDA and Sponsored Research Agreement or Patent License Agreement) to understand the terms that are likely to be present in an agreement.  The industry partner can also review "Essential" Terms to understand the terms that the University will likely not negotiate.  Through understanding the “basics” or the broad parameters of the negotiation, the industry partner can expedite the negotiation process by focusing on the negotiable terms and minimizing time spent addressing terms the University will likely not negotiate.

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Request Negotiation Parameters

The parties can expedite the negotiation process by informally agreeing to various parameters.  Those parameters can include:

  • Negotiation Period
    • Explanation:  A negotiation period/deadline sets the parties expectations as to the duration of the process.  The period is dependent on circumstances including the resources and availability of the State university tech transfer office and the complexity of the agreement.
    • Example:  The parties agree to use reasonable efforts to conclude the negotiation within [90] days of [the start date].
  • Number of Redlines Exchanged
    • Explanation:  Negotiations can slow if there are numerous exchanges of revisions or redlines.  Limiting the number of redlines reduces this problem and helps focus the parties on key terms.
    • Example:  The parties agree to exchange no more than [one] written revision each.
  • Face-to-Face Meeting Date
    • Explanation:  In person meetings can be more productive than exchanging countless revisions.  In order for the meeting to be productive, the parties should have a focused idea as to the terms at issue and the terms that are agreed.   Accordingly, a meeting may be more beneficial after the Industry partner has had the opportunity to review the proposed agreement provided by the State university.
    • Example:  The parties agree to meet in person within [10] days after the [University provided the Industry partner the agreement] or [Industry partner provided first revisions/comments to the agreement].

Accordingly, an industry partner can expedite the negotiation process by, e.g., requesting a 90-day negotiation period, limiting the exchange of redlines/revisions to 1 per party and having an in-person meeting within 10 after the industry partner has provided the State university with its first set of revisions.

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Focus On Negotiable Terms

Industry partners can expedite the negotiation process by focusing on Negotiable Terms such as price/royalty rate and scope of license.  Negotiations will slow if industry partner attempts to alter "Essential" Terms.  One way an industry partner can focus on negotiable terms is to use a template sponsored research agreement or patent license agreement as a starting point for the negotiation.

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Understand State University Technology Transfer Offices

State university technology transfer offices are not uniform.  Resources vary greatly across the numerous technology transfer offices throughout Ohio.  Some offices may have the size and resources to expedite negotiations more quickly than others.  Understand, however, that it is in the interests of the State universities to efficiently commercialize their discoveries, and that they will generally agree to expedite that process using reasonable efforts under their inpidual circumstances.

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What to Expect When Negotiating

A sponsored research agreement or license agreement will include numerous terms.  The Negotiation will involve “essential” terms and “negotiable” terms.  Essential Terms are those terms that state universities have no or very little leeway under the law to negotiate.  Negotiable terms are terms that can and should be negotiated.  The negotiation will typically focus on several key Negotiable Terms such as price and/or the scope of the license.

In order to focus the negotiation on Negotiable Terms, the Ohio Attorney General has prepared a summary of Essential Terms explaining why the terms are essential and identifying the required or preferred result: "Essential" Terms.

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Sponsored Research and License Agreements

The Ohio Attorney General, Ohio Board of Regents and various Ohio technology transfer officers developed a template Sponsored Research Agreement.  In addition, the Ohio Attorney General, with comment from various Ohio technology transfer officers, developed a document explaining the Anatomy of a Patent License and a template Patent License Agreement:


  1. Where the industry partner and university wish to memorialize a complex relationship, form agreements can serve as a useful baseline subject to appropriate modification to address the specific circumstances of the relationship.  The Sponsored Research Agreement and License are intended as such agreements. 
  2. Some universities will opt to use their own template agreements as a baseline.  Those template agreements should not differ materially from the above agreement.  In this scenario, the industry partner can compare the university’s baseline template to the appropriate OAG-approved form agreement. 
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Experimental/Technical Services Agreements

The Ohio Attorney General, Ohio Board of Regents and various Ohio technology transfer officers have developed a form Experimental/Technical Services Agreement.  This Experimental/Technical Services Agreement is approved by the Ohio Attorney General.

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