UBC Express License Agreement (ELA) & Guide

UBC grants the spin-off a worldwide license to use, manufacture, and sell products based on the licensed technology. The license has two components: 

• An exclusive license to patents, certain improvements made by UBC, and UBC’s rights in any improvements jointly made with the spin-off. 

• A non-exclusive license to UBC's know-how — the unpatented technical information and methods necessary to commercialize the patents. 

In certain circumstances a field of use restriction may apply, limiting the spin-off to a specific application area agreed at signing.  

The license also extends to the spin-off's affiliates (subsidiaries and commonly controlled companies). 

The agreement includes four main financial components: 

Royalties on Net Sales: 

• 2% of revenue where a product is covered by a patent claim in the country of sale or manufacture. 

• 1% of revenue in countries where no patent coverage exists. 

Royalties on Sublicensing Revenue: 

• UBC also receives a share of any revenue the spin-off receives from sublicensees: 20%, 15%, or 10% depending on the development stage of the most advanced product at the time the sublicense is signed. 

• The specific milestones that determine the applicable rate are agreed between UBC and the company, and are typically tailored to the technology type (e.g., clinical trial phases, regulatory approvals, or commercial launch). 

Yes, but with conditions: 

• Sublicensees must have the financial and technical capabilities reasonably necessary to develop and commercialize the licensed technology. 

• An unredacted copy of each signed sublicense agreement must be delivered to UBC within 30 days of signing. 

• Every sublicense must include indemnity and liability protections for UBC at least as strong as those in the main agreement, with UBC named as a direct third-party beneficiary. 

• The terms of the sublicense must not materially conflict with the Express License Agreement (ELA). 

• Multi-tier sublicensing (sub-sublicenses) is permitted, provided each tier meets the same conditions as the original sublicense. 

If the Express License Agreement (ELA) with the spin-off is terminated: existing sublicenses can survive, but only if the sublicensee is not in breach and agrees in writing to be bound directly to UBC under substantially similar terms. 

Affordable Access: if a life-science product receives marketing approval, the spin-off may be required to provide UBC with an Affordable Access Plan within 12 months, outlining how the product will reach low-and-middle-income countries and vulnerable populations in Canada. UBC will work with the company in good faith on this plan. 

UBC owns and controls all patents, ensuring broad protection. The spin-off plays an active role in funding and, after a certain point, managing them: 

• UBC covers the first C$20,000 of total patent costs (across all licensed patents, not per patent). 

• The spin-off is responsible for all patent costs above C$20,000.  
  • Historical costs incurred by UBC in excess of C$20,000 (if any) are reimbursed by the spin-off once they have received a defined level of financing.  
  • New patent costs incurred (in excess of the C$20,000 total) are paid by the spin-off. 

• The spin-off can directly manage patent prosecution after they have raised a defined level of financing or revenue. 

• If the spin-off assumes patent management after reaching the Funding Threshold (subject to UBC's approval, not to be unreasonably withheld), a joint retainer with patent counsel is required and UBC retains final approval on all substantive patent actions. 

• The spin-off must give UBC at least 60 days' notice before abandoning or allowing any patent to lapse in any country. UBC may then assume management of that patent, in which case it is excluded from the licensed patents. 

• During the Term, the spin-off cannot contest the validity or scope of any licensed patents. 

This structure aligns with academic licensing norms, balancing UBC's oversight with the spin-off's commercialization interests.