University Spinoff & Tech Transfer Legal Services
Montague Law advises university researchers, academic institutions, technology transfer offices, and startup founders on the legal complexities of commercializing university-developed intellectual property. Spinning out a company from a university involves navigating IP ownership rules, federal funding obligations, licensing negotiations, and conflict-of-interest policies that most startup lawyers never encounter. Our attorneys bring specialized experience in this intersection of academic research and commercial enterprise.
Technology License Negotiations
The foundational legal relationship between a university spinoff and its parent institution is the technology license agreement. Montague Law represents both licensees and institutions in negotiating exclusive and non-exclusive licenses for patents, copyrights, know-how, and biological materials. We address royalty structures, milestone payments, sublicensing rights, field-of-use restrictions, diligence obligations, and reversion provisions. Our goal is to structure licenses that incentivize commercial development while providing fair compensation to the university and its inventors.
Bayh-Dole Act Compliance
Research funded by federal agencies is subject to the Bayh-Dole Act, which governs IP ownership and commercialization obligations for federally funded inventions. We advise on Bayh-Dole compliance requirements including invention disclosure obligations, government use rights (march-in rights), US manufacturing requirements, reporting obligations to sponsoring agencies, and the interplay between Bayh-Dole and institutional IP policies.
SBIR/STTR Grant Compliance
Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) grants are critical funding sources for university spinoffs. Montague Law advises on grant application legal requirements, subcontracting arrangements with university collaborators, IP ownership under SBIR/STTR awards, data rights, and Phase I-to-Phase III commercialization pathways. We help companies structure their operations to comply with grant requirements while maximizing commercial flexibility.
Founder Conflict-of-Interest & Outside Activity Policies
University faculty who found spinoff companies face institutional conflict-of-interest policies, outside activity restrictions, and disclosure obligations. We advise founders on navigating these requirements, structuring their roles in the spinoff to comply with university policies, and negotiating faculty leave or consulting arrangements that allow meaningful participation in the company without jeopardizing academic positions.
Startup Formation for University Spinoffs
Forming a company to commercialize university IP involves unique considerations beyond standard startup formation. We address university equity stakes, inventor equity allocation, IP assignment versus licensing structures, sponsored research agreements that may continue post-spinoff, and investor requirements for clean IP ownership. We structure these companies to be attractive to sophisticated investors while respecting the legitimate interests of the academic institution.
Sponsored Research Agreements
Many university spinoffs maintain ongoing research collaborations with their parent institutions. We draft and negotiate sponsored research agreements, collaborative research arrangements, and material transfer agreements that protect the companys commercial interests while complying with university policies and federal funding requirements. We carefully delineate background IP, foreground IP, and jointly developed IP to prevent future ownership disputes.
Frequently Asked Questions
Who owns IP created at a university?
Most universities have IP policies that assign ownership of inventions created using university resources or during the course of employment to the institution. However, the specific rules vary by university and may depend on factors including the source of funding, the nature of the invention, and applicable state law. We analyze each situation under the specific institutions policies and applicable law.
Can I use my university research in my startup?
Generally, you will need a license from the university to use IP developed during your academic work. The technology transfer office manages the licensing process, and terms are negotiable. We help founders understand their rights, prepare for licensing negotiations, and structure agreements that support the companys commercial objectives.