[SERVICE]Technology transfer
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.
Your attorneys
Andrew RapackeManaging Partner · Registered Patent AttorneyFormer Naval Engineering Officer. M.S. in electrical and electronics engineering.
Ken BrooksRegistered Patent AttorneyMaterials science and engineering. Patents in software, AI, and electrical and mechanical systems.[01]Who it's for
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.
A spinout or a founder taking an exclusive license from a university or federal lab, with milestones you can meet.
Inventors and labs moving a discovery into a company, with fair compensation and clear reporting.
Owners who want royalties from a patent, software or know-how without giving up ownership.
Two companies building together, with ownership of improvements settled before the work starts.
[02]What we handle
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.
We also look at existing patents and trademarks, regulatory requirements and the commercial obstacles to the deal before terms are set.
[03]The basics
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.
| 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 |
Before terms are set, we check what is really being transferred.
For medical technology, our FDA regulatory compliance and medical device patent 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.
[04]Your options
Most technology transfers are one or the other. The difference decides who owns the IP when the deal ends.
| 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 page.
[05]University and federal research
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.
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.
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.
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.
[06]Fees
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.
Book A Free Strategy CallWhat sets the fee is the work itself, not the time on the clock.
Ongoing work for a growing company can run on a monthly Fractional IP Counsel 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.
[07]The process
What happens at each step and who does the work. Timing depends on the other side and is never a promised date.
Technology transferCall to signed
[08]Questions
Still deciding? Your first call is free and comes with a straight answer on what the agreement needs.
Book A Free Strategy CallA 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.
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.
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.
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.
Whoever the agreement says. Without a clear improvements clause, disputes are common. Startups often negotiate to own the improvements their own team makes.
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.
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.
[09]Learning Center
What is technology transfer? Technology transfer is the shifting of skills, capital, knowledge, and value of innovation from the point of conception to actual reduction…
Learn what a patent licensing agreement grants, how exclusive and non-exclusive terms differ, and which clauses protect you. Book a free IP strategy call.
You have an age-old chicken and egg dilemma on your hands. You have a revolutionary invention that you want to get out there are start licensing. Unfortunately, if you…
[10]Client reviews
4.7 across 614 public reviews on Google, Trustpilot and Avvo.
#1Top reviewed IP law firm*
Read client reviews“Andrew Rapacke and his team are exceptional. They did our provisional and non provisional patents. The entire team is professional and an ease to work with.”
“I can safely trust them with scientific and legal integrity regarding ownership and accountability of inventions.”
“The Rapacke Group stands by their fees with no surprises.”
Reviews reflect individual client experiences. Quotes are excerpts. Prior results do not guarantee a similar outcome. *#1 top reviewed means the most public client reviews on Google, Trustpilot and Avvo of any US patent or trademark firm.
Talk through the deal and the IP behind it. The call is free, with no obligation.
