May 29-30, 2003
ITEM 119-1001-R0503 Approval of University System/Employee Joint Venture; The University of Montana-Missoula
THAT: In accordance with Montana University System Policy 407, the Board of Regents of Higher Education authorizes The University of Montana-Missoula to enter into a licensing arrangement with Sunburst Sensors, LLC for intellectual property developed by University employee Michael D. DeGrandpre, who has a significant financial interest in Sunburst Sensors, LLC.
EXPLANATION: The University of Montana holds a patent application Serial No. 09/775,386, filed January 31, 2001, titled “CALIBRATION-FREE OPTICAL CHEMICAL SENSORS.” The technology covered by this patent application involves an apparatus for taking absorbance-based chemical measurements which requires no calibration. This technology may have applications in a variety of applications, which include environmental testing, blood-chemistry measurements, and chemical processing.
University employee Michael DeGrandpre, the inventor on the patent, has become a partner in Sunburst Sensors, LLC, which wishes to license the patent. The University of Montana wishes to grant an exclusive license to Sunburst Sensors, LLC to use the technology in measuring chemistry of marine and freshwater environments and a non-exclusive license to use the technology for all other applications. Granting Sunburst Sensors, LLC this license will not interfere with any contractual obligations the University holds, but it will provide a business opportunity for a Montana-based company.
The license is perpetual and covers the United States and will contain provisions for The University of Montana to receive an up-front licensing fee and 10 percent of all adjusted gross revenue, fees, royalties, or other payments that the company receives from sub-licenses. Furthermore, Sunburst Sensors, LLC will pay for patent costs for patents covering territories in which the company has exclusive rights.
Granting this license will encourage Professor DeGrandpre to develop the company as a new, profitable Montana venture and will set an example for other entrepreneurs from the University looking for opportunities for commercial use of their innovations and creations. The University will incur no cost for this agreement, and although expectations of large financial returns exist, they may be many years in coming. This agreement will assist in the formation and growth of a new small business for Montana and will establish goodwill with University employees.