A New Approach to Licensing Nanotechnology from Universities to Start-Up or Emerging Companies in Exchange for Stock

Keywords:
legal, technology transfer, Atlanta

Abstract:
According to a 2002 licensing survey by AUTM, the national association of university technology transfer managers, U.S. universities spent $31.7 billion in research, resulting in 12, 638 new invention disclosures, of which licenses to develop and commercialize were executed for only 3, 379 inventions. Of the licenses that were granted, 70% resulted in universities and other research institutions taking equity in the start-up company as all or part of the consideration for the license. The dilemma for both the university and the company is this: When equity in the start-up company is issued for payment for the license, the company is concerned about giving up too much equity, and the university is concerned about not getting enough equity, relative to the future value of the technology. Under a patent-pending new approach called The Royalty-Based Cumulative Convertible Preferred Stock, royalties are accrued in an “equity bank, ” and later convert into stock, at a Conversion Price equal to the average price per share paid for all outstanding shares at the time of conversion. This approach encourages transfer and commercialization of technology, and normalizes the value exchange between the university and start-up or emerging company.

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Nanotech 2005 Conference Program Abstract