Assign Intellectual Property to Johns Hopkins
One option students may choose is to assign their intellectual property (IP) to Johns Hopkins University. Before proceeding, students are encouraged to meet with JHTV to determine whether the decision is of mutual interest. If it is, the university will cover the cost of patent protection and JHTV works on behalf of the student inventors to license the technology and generate revenue.
By assigning the technology, students have the opportunity to utilize resources through JHTV including applying for translational funding. If students want their technology to be available to the world, but do not want to be involved in the process, JHTV’s licensing team can step in and develop a commercialization strategy and attempt to license the technology to a third party. In this case, students become “inventors” under the IP policy, and receive any distributions from licensing revenue received by JHTV.
Create a Startup
Another option students choose is to form a startup company based on the assigned technology. If they have assigned IP to Johns Hopkins, this now requires the startup company to license the technology “back” from the university. As part of its standard startup license agreements, Johns Hopkins typically seeks:
- Payment of ongoing patent expenses, and reimbursement of past patent expenses
- An upfront license fee
- An equity stake in the startup
- Royalties on sales, including Minimum Annual Royalties
- Milestone payments tied to continued technology development
Johns Hopkins University’s negotiating position will treat a student-assigned technology like any other in its portfolio, and the student-founded startup like any other outside entity seeking a license. Students need to understand the basic components of a license and related obligations, in addition to specific legal terms and business terms consistent with peers. It is highly encouraged for students to involve a lawyer in these negotiations.
Advantages and Concessions to Licensing
The startup defrays the cost of patent protection and becomes a FastForward company, which makes it eligible to apply for subsidized lab/office space, secures access to venture capital fundraising assistance and qualifies it to receive pro bono services from sponsors.
In negotiating a license to the technology, Johns Hopkins will seek to recoup the investment made in the patent and will negotiate licensing terms that incentivize development of the technology and seek economics on behalf of the inventors. In other words, the startup may give up economics in the long-term in exchange for Johns Hopkins’ upfront investment in patent protection. For an early stage company, assistance with IP protection is valuable, but this may not make sense if the startup does not plan on accessing FastForward services or has other funding available.