From Laboratory to Licence: University Technology Transfer, Sponsored Research, and the Spin-Out
By Casey Scott McKay ·
University research produces a great deal of patentable subject matter and comparatively few commercial products, and the gap between them is filled by a body of law and practice that neither academic nor commercial lawyers usually know well. This article explains the framework. It covers the Bayh-Dole Act and what it actually requires - disclosure, election, and the obligations that run with the patent - and why Stanford v. Roche made assignment language the decisive question. It then works sponsored research agreements and the publication and ownership terms that recur, material transfer agreements and their reach-through provisions, and the exclusive licence terms a university will and will not accept. It closes with spin-out formation, equity, and the conflicts that require management.
IP and Technology > IP and IT in Corporate Transactions | Article | Published 11 December 2023 - Updated 27 September 2025 | Casey Scott McKay - marksy.us
Summary. University research produces a great deal of patentable subject matter and comparatively few commercial products, and the gap between them is filled by a body of law and practice that neither academic nor commercial lawyers usually know well. This article explains the framework. It covers the Bayh-Dole Act and what it actually requires — disclosure, election, and the obligations that run with the patent — and why Stanford v. Roche made assignment language the decisive question. It then works sponsored research agreements and the publication and ownership terms that recur, material transfer agreements and their reach-through provisions, and the exclusive licence terms a university will and will not accept. It closes with spin-out formation, equity, and the conflicts that require management.
Keywords: university technology transfer · Bayh-Dole Act · subject inventions · election of title · march-in rights · US manufacturing preference · sponsored research agreements · material transfer agreements · invention disclosure · publication rights · grace period · exclusive licence terms · diligence milestones · equity in spin-outs · inventor royalty sharing · research exemption · Madey v Duke · CRADA · federal funding compliance · academic conflicts of interest
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