# Technology transfer agreements that move IP from lab to market

> Technology transfer agreements drafted and negotiated for startups, universities and partners. Licenses, assignments and diligence at a flat fee quoted first.

Page: https://arapackelaw.com/technology-transfer-agreements/  
Title: Technology Transfer Agreements | Rapacke Law Group  
Breadcrumb: [Home](https://arapackelaw.com/) / [Startup legal services](https://arapackelaw.com/startups/) / [Technology transfer agreements](https://arapackelaw.com/technology-transfer-agreements/)

We draft, review and negotiate the agreements that move a patent, software or know-how to the company that will sell it, and we protect the IP itself, so the rights match.

- Flat fee, quoted before work begins
- No hourly billing
- Patent and licensing work in one firm

## For founders licensing in, and owners licensing out.

Technology transfer turns research and development into revenue. Done well, it sets who owns what, who may use it, and what each side gets when it succeeds.

- **Startups licensing university technology** A spinout or a founder taking an exclusive license from a university or federal lab, with milestones you can meet.
- **Universities and research teams** Inventors and labs moving a discovery into a company, with fair compensation and clear reporting.
- **Companies licensing out** Owners who want royalties from a patent, software or know-how without giving up ownership.
- **Co-development partners** Two companies building together, with ownership of improvements settled before the work starts.

## Transfer the right rights, and only those.

A technology transfer agreement is only as good as the rights behind it. We read the patents and the ownership records, then write the grant around them.

### What we draft and negotiate

- **License grants** Exclusive, non-exclusive or limited to a field of use or territory.
- **Assignments** A full transfer of ownership, recorded with the USPTO where it applies.
- **Royalties and milestones** Upfront fees, running royalties, minimums and performance milestones.
- **Improvements and sublicensing** Who owns later improvements and derivative works, and whether the licensee may sublicense.

### Risks we check before you sign

- **A gap in the chain of title** An inventor who never assigned their rights can leave the licensor unable to grant them.
- **Federal funding obligations** Research paid for with federal money carries conditions the license has to respect.
- **Export controls** Some technical data cannot leave the US, or reach certain people, without a license.
- **A grant broader than the patent** Paying for rights the patents do not actually cover.

We also look at existing patents and trademarks, regulatory requirements and the commercial obstacles to the deal before terms are set.

## What is a technology transfer agreement?

A technology transfer agreement is a contract that moves the right to use, develop or sell a technology from one party to another. It can cover patents, software, technical data and know-how, and it usually comes from a university, a federal lab or a company that built the technology but will not commercialize it alone.

*Types of technology transfer agreements*

| Agreement | What it does | Typical use |
| --- | --- | --- |
| **License** | Lets the licensee use the technology while the owner keeps it | A startup commercializing a university patent |
| **Assignment** | Transfers ownership outright | A founder moving IP into the company, or a sale of a patent |
| **Option agreement** | Reserves the right to take a license later | Time to test the technology or raise money first |
| **Sponsored research agreement** | Funds research and sets who owns the results | A company paying a lab to develop something specific |
| **Material transfer agreement** | Covers samples, prototypes or materials sent for research | Testing before any license |
| **Non-disclosure agreement** | Keeps the technical details confidential during talks | Every early conversation |
| **CRADA** | A cooperative research and development agreement with a federal lab | Joint work with a government laboratory |

### Key terms in a technology transfer agreement

- **Grant and scope.** Exactly what is licensed, in which field of use and territory, and whether it is exclusive.
- **Payments.** Upfront fees, royalties on sales, minimum annual royalties, sublicense income and, for startups, sometimes equity.
- **Diligence and milestones.** What the licensee must do, and by when, to keep an exclusive license.
- **Improvements.** Who owns improvements and derivative works made by either side.
- **Patent costs and enforcement.** Who pays to prosecute and maintain the patents, and who can sue an infringer.
- **Confidentiality, warranties and indemnity.** What each side promises about the technology and who carries the risk.
- **Term, termination and disputes.** How the agreement ends and how disagreements are resolved, through negotiation, mediation, arbitration or court.

### Due diligence before you sign

Before terms are set, we check what is really being transferred.

1. **Legal status.** Whether the patents are granted, pending or expired, and whether maintenance fees are paid.
2. **Ownership.** Every inventor’s assignment, and any co-owner or funding agency with rights.
3. **Existing rights.** Earlier licenses, options or liens that limit what can be granted.
4. **Surrounding IP.** Related patents and trademarks held by others that could block the product.
5. **Regulatory path.** Approvals the product will need, such as FDA review for a medical device.
6. **Commercial obstacles.** Anything that could make the milestones or royalties unrealistic.

For medical technology, our [FDA regulatory compliance](https://arapackelaw.com/fda-regulatory-compliance/) and [medical device patent](https://arapackelaw.com/patents/medical-device-patents/) work fits into the same review.

For a deeper look at how transfers create value for both sides, read [unlocking the power of IP in technology transfer](https://arapackelaw.com/intellectual-property/technology-transfer/).

## License or assignment. Which one fits?

Most technology transfers are one or the other. The difference decides who owns the IP when the deal ends.

*License and assignment compared*

|  | License | Assignment |
| --- | --- | --- |
| Who owns the IP | The licensor keeps ownership | The buyer becomes the owner |
| How it is paid | Often royalties over time, with fees or milestones | Usually a lump sum, sometimes with earn-outs |
| Can it be limited | Yes, by field, territory, time or exclusivity | No. Ownership moves as a whole, though a license can be granted back |
| When it ends | Rights return to the owner | Ownership stays with the buyer |
| Recording | Exclusive patent licenses can be recorded with the USPTO | Patent assignments should be recorded with the USPTO |

Assignments matter inside a startup too. Founders and contractors should assign their inventions to the company in writing, or investors will find the gap in diligence. See our [IP licensing agreements and assignments](https://arapackelaw.com/intellectual-property-licensing-agreements/) page.

## Licensing technology from a university or federal lab.

Most university inventions are licensed through the school’s technology transfer office, and many were funded at least in part by the federal government. That brings rules a private deal does not have.

### Federally funded inventions

Under the Bayh-Dole Act, a university or small business may keep title to inventions made with federal funding, with conditions. The government keeps a non-exclusive license to use the invention, the owner must report it, and an exclusive licensee generally has to manufacture products sold in the US substantially in the US unless a waiver is granted. A license that ignores these terms can be challenged later.

### Export controls

Some technical data and software are export-controlled. Sharing them with a foreign partner, or with foreign nationals inside the US, can require a government license. The agreement should say who is responsible for compliance.

### Conflicts of interest

When a faculty inventor also holds equity in the startup taking the license, the university will have conflict-of-interest rules. Planning for them early keeps the deal from stalling.

> **What startups usually negotiate**
>
> Milestones you can actually hit, a royalty that works at your margins, rights to improvements your team makes, and the ability to sublicense to a partner or an acquirer.

## One flat fee, quoted before work begins.

There is no hourly billing. Your technology transfer agreement is quoted as a flat fee on your strategy call, once the scope is clear, and nothing starts until you approve it.

What sets the fee is the work itself, not the time on the clock.

- **The agreement type.** A license, assignment, option or research agreement.
- **Who drafts first.** Writing the first draft, or reviewing and negotiating the other side’s.
- **How much diligence it needs.** The number of patents, owners and funding sources to check.

Ongoing work for a growing company can run on a monthly [Fractional IP Counsel](https://arapackelaw.com/counsel-on-demand/) plan instead of one fee per document. This service is not covered by The RLG Guarantee, which applies to patentability searches, provisional patents, design patents and trademarks.

## From first call to a signed agreement.

What happens at each step and who does the work. Timing depends on the other side and is never a promised date.

1. **Strategy call** (Day one). Free. Walk us through the deal, the documents or the problem.
2. **Scope and flat fee** (Flat fee). What the work covers and its price, in writing, before it begins.
3. **Diligence and drafting**. We check the IP, then draft or mark up the agreement.
4. **Negotiation**. Terms worked through with the other side, with you approving each change.
5. **Signed and recorded**. Executed, and recorded with the USPTO where it applies.

## Questions about technology transfer agreements.

### What is a technology transfer agreement?

A contract that moves the right to use, develop or sell a technology from one party to another. It may be a license, where the owner keeps the IP, or an assignment, where ownership moves. It sets the scope of the rights, the payments and what each side must do.

### What is the difference between a license and an assignment?

A license lets someone use the technology while the owner keeps it, and it can be limited by field, territory or time. An assignment transfers ownership outright. If you need to own the IP, for example to raise money on it, an assignment or an exclusive license is usually required.

### How do startups license technology from a university?

Through the university’s technology transfer office. The startup usually signs an option or license with milestones, royalties and sometimes equity for the university. Because many university inventions are federally funded, the license also has to respect the Bayh-Dole Act.

### What royalty rate is typical?

There is no single rate. It depends on the industry, how close the technology is to a product, exclusivity and what else the licensee contributes. Negotiating a rate that works at your margins is part of the agreement work.

### Who owns improvements made after the license?

Whoever the agreement says. Without a clear improvements clause, disputes are common. Startups often negotiate to own the improvements their own team makes.

### Do technology transfer agreements need to be recorded?

Patent assignments should be recorded with the USPTO, generally within three months, to protect the new owner against a later buyer who did not know about it. Exclusive licenses can be recorded too.

### How much does a technology transfer agreement cost?

With us it is a flat fee, quoted on your strategy call before any work begins. The fee depends on the type of agreement, whether we draft or negotiate the other side’s draft, and how much diligence the IP needs.

## Your attorneys

- [Andrew Rapacke](https://arapackelaw.com/learn-more/the-team/andrew-rapacke/), Managing Partner, Registered Patent Attorney. Former Naval Engineering Officer. M.S. in electrical and electronics engineering.
- [Ken Brooks](https://arapackelaw.com/team/ken-brooks/), Registered Patent Attorney. Materials science and engineering. Patents in software, AI, and electrical and mechanical systems.

Meet the team at https://arapackelaw.com/learn-more/the-team/

## More in Startup legal services

- [Startup legal services](https://arapackelaw.com/startups/)
- [Business formation and structure](https://arapackelaw.com/business-formation-and-structure/)
- [Contracts and agreements](https://arapackelaw.com/contracts-agreements/)
- [Cease and desist letters](https://arapackelaw.com/cease-desist-letters/)
- [Fractional IP counsel](https://arapackelaw.com/counsel-on-demand/)
- [FDA regulatory compliance](https://arapackelaw.com/fda-regulatory-compliance/)
- [Fundraising agreements](https://arapackelaw.com/fundraising-agreements/)
- [IP licensing agreements](https://arapackelaw.com/intellectual-property-licensing-agreements/)
- [Non-disclosure agreements](https://arapackelaw.com/non-disclosure-agreements-ndas/)
- [Privacy and data protection](https://arapackelaw.com/privacy-and-data-protection/)

## Go deeper on licensing and transfer.

- [Innovate & Win Together: Unlocking the Power of Intellectual Property in Technology Transfer](https://arapackelaw.com/intellectual-property/technology-transfer/)
- [What Is a Patent Licensing Agreement? Key Terms and Why They Matter](https://arapackelaw.com/patents/patent-licensing-agreement/)
- [The One Thing That Can Make or Break a Licensing Deal](https://arapackelaw.com/business/the-one-thing-that-can-make-or-break-a-licensing-deal/)

[All licensing articles](https://arapackelaw.com/category/licensing/)

## Next steps

- [Book a free strategy call](https://arapackelaw.com/contact-us/) with a registered patent attorney, or call (954) 951-0154
- [Take the Intelligent IP Quiz](https://arapackelaw.com/intelligent-ip-quiz/) to see what to protect first
- [The RLG Guarantee](https://arapackelaw.com/rlg-guarantee/), the refund promise on four services

General information, not legal advice.