UB SWIFT

In valuing industry collaborations, the university understands that efficient transactions and financial certainty are important to business, so it has created UB SWIFT. 

This approach reduces transaction time and eliminates lengthy, costly negotiations because it empowers both parties to set research and licensing terms at the project planning stage.

On this page:

UB SWIFT Preferred License Terms

The university is offering the UB SWIFT terms as a beneficial alternative to the standard option (see comparison chart below).

  • Company locks in preferred exclusive license terms for all intellectual property resulting from the project.
  • Expedited transaction time through use of the standard SWIFT agreement.
  • Company part of SWIFT decision: the company; UB and the principal investigator will decide jointly if the project is suitable for UB SWIFT.
  • Exception requests will be considered for university-owned, background intellectual property not included in the exclusive license terms. 
Terms UB SWIFT UB Standard Option
Preferred Terms Fee 10% of the contract budget or $15,000, whichever is greater n/a
Royalty Rate

1% after exceeding $50 million in cumulative net sales if market entry requires human trials and regulatory approval; or

1% after exceeding $20 million in cumulative net sales for all other technology

Negotiated
License issue fee None Negotiated
Minimum Annual Royalties None Negotiated
Due Diligence Milestones None (unless the project includes federal funding) Negotiated
Sublicensing Granted Negotiated
Patent Prosecution Management Company Manages Negotiated

More about UB SWIFT Terms

  1. Payment of the Preferred Terms Fee secures the sponsor an exclusive, worldwide license with preferred terms for all UB’s rights in inventions arising from the research project that are solely or jointly owned by UB (i.e. by the Research Foundation for SUNY for the benefit of UB).
  2. To encourage academic-industry collaborations, one half of the the Preferred Terms Fee is deposited into the principal investigator’s (PI's) non-sponsored research account for discretionary research use. If there are co-PIs, the PI allocation will be distributed evenly among them. This funding is expected to help the PI(s) support their labs and seed new research avenues and proposals that grow and expand UB’s research enterprise. The remaining half of the fee will be deposited in a general account to support campus research activites.
  3. The Preferred Terms Fee is calculated based on the entire project budget including standard university facility & administrative (F&A) fees that must be paid at the full applicable research F&A rate.
  4. The Preferred Terms Fee is applied based on funds obligated in the agreement. As an example, if the initial obligation of funds is less than $150,000, the sponsor pays $15,000. If the project is extended, the sponsor will not be charged the 10% fee on future obligations until after the $150,000 threshold in obligated funds is exceeded.
  5. The Preferred Terms Fee is due within 30 days after execution of the agreement. Failure to pay will result in the license converting from the UB SWIFT preferred terms to the company receiving an option to negotiate a license to any IP resulting from the project.
  6. If federal funding is used in part to develop the project invention(s), the license will be subject to other terms such as performance milestones required to satisfy federal Bayh-Dole obligations.
  7. Under the UB SWIFT, the sponsor manages all patent activities and pays all costs associated with patent prosecution. The sponsor will collaborate with UB on the patent claims and must name the Research Foundation for SUNY as the sole or joint assignee, as appropriate.
  8. The UB SWIFT is not available for consortia agreements, awards for public service, testing, or research awards or sub-awards/subcontracts from government, non-profit or other types of non-commercial sponsors.

Frequently Asked Questions

If UB’s principal investigator(s) for the project does (do) not feel the UB SWIFT terms are appropriate, can they opt out?

Yes, the PI(s), the campus or the sponsoring company may individually or jointly decide the UB SWIFT terms and agreement are not appropriate for the project, in which case the terms of the contract will be negotiated.  The disadvantage is that the transaction will take longer.

Why would a company decide to pay the Preferred Terms Fee?

When companies negotiate sponsored research agreements with universities, the two issues raised most often by the companies are transaction time and lack of economic certainty concerning licensing. Payment of the Preferred Terms Fee locks the company into preferred fixed terms and using the UB SWIFT agreement means a transaction can be completed almost immediately after the scope-of-work and budget are approved. Benchmarked across industries, 1% is a very favorable royalty rate. 

As an added benefit, and to account for the cost of development and product launch, UB offers a royalty-free period for up to $50 million in cumulative net sales if market entry requires human trials and regulatory approval, or up to $20 million for all other technology.  Human trials and regulatory approvals add cost so the royalty-free period is greater.

Are the preferred terms negotiable?

If any terms are negotiated, both parties lose the intended benefit of an expedited transaction.  As such, UB reserves the right to negotiate all terms if there is any deviation from the UB SWIFT agreement.

What if economic certainty is important to the company but some of the UB SWIFT terms are not appropriate for the project?

UB will still pre-negotiate exclusive (or non-exclusive terms) license terms, if appropriate, but in that instance all terms are negotiated.  The disadvantages are a lengthier transaction time and the preferred terms are not offered.

When are license terms negotiated under the Standard Option?

When an invention is reported to the sponsor during or at the end of the project, the sponsor has the option to negotiate an exclusive license at that time.  It is arguably a more appropriate time to negotiate the value of the actual intellectual property developed; however, many companies prefer to have financial certainty before the project starts.  UB offers the UB SWIFT agreement to provide financial certainty with an expedited transaction. 

How will UB use the Preferred Terms Fee?

To encourage academic-industry collaborations, one half of the Preferred Terms Fee will be deposited into the principal investigator’s non-sponsored research account for discretionary research use. If there are co-PIs, the fee will be distributed evenly among them.  This funding is expected to help support the PI’s lab and seed new research avenues and proposals that grow and expand UB’s research enterprise. The remaining half of the fee will be deposited in a general account to support campus research activities.



 

What if the sponsoring company prefers to use their own agreement template?

A major advantage of using the standard UB SWIFT agreement is to accelerate the transaction time for both parties so the research project can start as quickly as possible.  In return, UB offers preferred exclusive license terms.  The UB SWIFT agreement is pre-approved by the Research Foundation for SUNY and was developed to be business friendly.  The preferred terms are not offered if there is deviation from the UB SWIFT agreement. 

Questions or Need More Information

Contact Jennifer Mandina: (716) 645-8952 or mandina@buffalo.edu