License Agreement Review Procedures

Patent, Technology, and Software Licenses Conveying Rights in Board Intellectual Property

The Board has delegated to each institution's President the authority to sign license agreements on behalf of the Board, so long as those contracts conform to the requirements of the Office of General Counsel (OGC). OGC requires that license agreements be reviewed in accordance with these OGC License Agreement Review Procedures before being signed.

These procedures help you evaluate contract license agreements that will be signed on behalf of the Board. Note: If you use a standard form agreement previously approved by OGC to document your agreement, you will not use these procedures unless you or the potential licensee makes or requests changes to the standard form agreement. You will not need to use the License Agreement Checklist until you have received first revisions from your potential licensee unless you make significant revisions to the standard for agreement before first transmitting it to the potential licensee, in which case you should use the License Agreement Checklist to evaluate and modify your draft prior to transmitting it to the potential licensee.

These procedures are a way for us to provide you with general information about your license agreement. These procedures cannot provide specific legal advice for any particular situation, so you must not rely on this information as a substitute for obtaining legal advice from OGC or your institution's attorney if you need it.

If these procedures do not require that your license agreement be reviewed by OGC, your use of these procedures means that you have complied with our requirements for review of your agreement, but it does not mean that we have "approved" your agreement in the same way we would approve a contract we had actually seen. If you feel these procedures are not adequate for your needs, please feel free to consult with us directly.

Step One

Review the License Agreement Checklist to become familiar with the problems you'll be looking for in your agreement.

Step Two

Read the license or option agreement, keeping these potential problems in mind.

Step Three

Note sections likely to need attention.

Step Four

Answer the questions in the Checklist based on your reading of the agreement. Click "submit" for an analysis of your responses to the Checklist and related recommendations.

Step Five

Carefully read the Checklist recommendations and integrate the recommendations into your agreement. Print a copy of the recommendations and keep the copy in your file.

The copy of the Checklist recommendations will be helpful when conferring with us and when describing to your Chief Executive Officer (or designee) any deviations from the Checklist recommendations and the circumstances justifying approval or signature in spite of those deviations.

Step Six

Negotiate the recommended changes with your potential licensee. The recommendations are based on general good contracting principles and specific guidelines from Regental Policy. None of the recommendations are unreasonable and all should be acceptable to most parties. The Checklist provides a link to additional information about certain contract clauses that you may find helpful in your negotiations with licensees.

Step Seven

If there are extenuating circumstances that might justify some deviation from normal expectations, it may be appropriate to accept agreement provisions that would ordinarily be unacceptable. As a rule, always try to obtain the licensee's agreement to terms that are recommended by the Checklist. If you do not feel that this is appropriate or the licensee refuses, please note the deviations from normal expectations in your transmittal letter to your Chief Executive Officer, along with those circumstances that justify his or her approval of the agreement on behalf of the Board of Regents despite the problems identified by the License Agreement Checklist.

Last Updated: September 25, 2011