Bigger deals will likely include multiple components, including:
- A license agreement, to transfer rights to the IP;
- An SRA, for the inventor to do additional research to advance the technology for the licensee; and
- One or more consulting agreements, for the inventor to provide additional assistance to the licensee.
Companies often combine the different components in a single agreement; in universities, these agreements are often the responsibility of different offices—the TTO for the license, the Sponsored Programs Office for the SRA and the General Counsel’s office for the consulting agreement.
For these agreements, it’s important that:
- All components of the deal are contained in the term sheet;
- All offices communicate during the process;
- For one office—probably the TTO—to be the leader, coordinator and primary contact point with the licensee;
- For the agreements to have a consistent style, to be internally consistent and to cross reference each other.