University of Minnesota  Procedure

Selling University-Developed Software and Services

All the external sales procedures are applicable to selling University developed software and services. This procedure is applicable only to the specific activity of selling University developed software and services. This procedure is not applicable to other external sales activities.

University-Developed Software Services

Software that is developed as a result of an academic activity or project may be considered for commercialization. The path of commercialization depends on the intent of the transaction and whether the Intellectual Property (IP) ownership rights will be transferred externally with the software. If the University will retain IP rights the activity is classified as an external sale and must be facilitated via the External Sales Office or the Technology Commercialization. This type of activity is most commonly referred to as Software as a Service (SaaS), End User Licensing and Annual Support.

If the intent of the transaction is that IP rights will be transferred or licensed externally the activity must be classified as a Commercialization of IP  and must follow Board of Regents Policy: Commercialization of Intellectual Property Rights and related processes and procedures facilitated by the Technology Commercialization.

For best results, or if the future strategy of the University-developed software is unknown, units should discuss the transaction with both the Technology Commercialization and the External Sales Office. Refer to the process diagram that highlights decision points for the interrelatedness of this type of activity.

It is highly recommended that authors of academic work opt into a formal agreement with the University prior to considering the external sale of University developed software and services. Authors of academic work will be responsible for developing or procuring external services to create their own independent agreements. 

Handling of Transactions

SaaS, End User Licenses and Annual Support transactions treated as external sales are considered managed risk. The unit conducting the activity must follow Administrative Procedures: Obtaining Approval to Conduct External Sales, Establishing an External Sales Accounting Structure, Establishing External Sales RatesEstablishing External Sales Agreements (Contracts), Tax Considerations Pertaining to External Sales Transactions and Review of External Sales Activity.

In addition to the above referenced procedures, specific action or additional procedures are required as follows:

  • Obtaining Approval to Conduct External Sales – during the approval process, the unit must engage with the Office of Information Technology related to both technology security and infrastructure capabilities.
  • Establishing External Sales Rates – rates must fully recover all recurring and maintenance costs required to support the activity.
  • Establishing External Sales Agreements – use the specific standard contracts developed by the Office of General Counsel for SaaS, End User License and Annual Support activity.

Information Technology

Units must comply with all applicable information technology policies and procedures referenced under Related Information in the Policy.

Special Considerations

Units are required to use University standard processes and technology to support University-developed software technology. The standard processes and technology include but are not limited to: billing, accepting credit cards, etc. Refer to the policy for  the standard processes and contact information.

If the University-developed software uses another entity’s software technology, a licensing agreement is required. All licensing agreements require Technology Commercialization review. 

Regular Review

Depending on the level of activity and scope of the customer base, the Technology Commercialization and External Sales Office will meet with units conducting this type of activity on a recurring basis to conduct a review. The objective of the review is to highlight any programmatic, financial, technological, or market impacts related to the original strategy and determine if strategy changes are in the best interests of the University.

If it is determined that an external technology licensing exit (sale of technology) is in the best interest of the University, Board of Regents Policy: Commercialization of Intellectual Property Rights and related Technology Commercialization procedures take precedence. Contractual and financial obligations related to existing external sale agreements could impact financial distribution of any commercialization proceeds and will be resolved according to the Appendix: Recovery of Project Costs for Commercialization.