Now a days technology has developed a lot this is because of proper technology transfer by following proper drafting guidelines while making an agreement. Generally, technology transfer means the products which are made by using intellectual property and to make them available to the society for public use in the form of product and services. This transfer cannot be done with one individual, so researchers form collaborations with other universities to share knowledge and innovative ideas for further development. These all are done with some conditions which are made to protect IP rights of the university.
This technology transfer mainly occurs in 3 forms they are:
1.Technology transfer between nations (developed to under-developed countries),
2.Technology transfer privately (companies to partner companies),
3.Transfer transfer from public to private (government entity to private company)
Technology transfer agreements:
Technology transfer agreement is defined as the transfer of intellectual property from one generation to the next generation through licensing agreement. Through licensing agreement, the licensee who takes the permission for specific period of time, attains a right to use the technology for fixed period of time by paying fee. The licensee has to get the permission from the licensor, who will grant the permission. The transfer is conducted through documents, software programs, raw materials, ministries, and schooling. Technology transfer agreement is a wide range concept and focuses on organization, companies to improve the company technology whereas licensing agreement grant the company for the usage of technology which protects Intellectual Property Rights including patents. Technology transfer agreement is a legal contract between licensor and licensee. Intellectual property related to technology transfer agreement can include Patents, utility models, trademarks, copyrights, technical assistance, know-how.
Types of technology transfer agreements:
Agreement is between licensor and licensee. Licensor is the owner of patent, trademark or brand and he will grant permission to licensee for the use of them for particular fee The most frequently used methods for the transfer of technology from lab to market are:
i) Technology transfer licensing agreements: This agreement is the temporary transaction to licensee. The licensor has the right to continue the same work and under negotiated conditions
ii) Assignments of intellectual property rights: This agreement is the permanent transfer. It involves the transfer of ownership of IP from assignor to assignee.
iii) Confidentiality agreements: it is a legally bound agreement not to disclose confidential information by the party who had learned, and it has to be used only for those which are specified in the agreement.
iv) Collaborative research agreements: Two or more parties collaborate to develop and commercialize a new technology.
v) Consultancy agreements: These agreements involve consultancy work by professors and researchers who provide expertise services in exchange for payment.
vi) Sponsored research agreements: These agreements govern the relation between university or research institute and sponsor.
Types of technology transfer:
i) Vertical technology transfer is getting new technology from the new range of technology while it is still at advancement stage.
ii) Horizontal technology transfer agreement is transfer of already existing technology which is well-known from one organization to other organization.
Drafting guidelines:
The technology transfer agreement should be drafted with utmost precision, without any ambiguity and uncertainty. Both the parties should decide in which mode of transfer of knowledge and should decide, up to which extent of transfer they need.
1. Consideration: The price is fixed, and it is in accordance with FRAND (Fair, Reasonable and Non-Discriminatory) in case of standard essential patents. If it is technological product, there is a transfer of hardware or software, in this case royalties should be paid to licensee based on the net sales of the licensed product.
2. Confidentiality: Trade secrets, business information etc should be protected and they are subject matter of non-disclosure.
3. Warranties: Agreements contains provisions related to warranties which make the licensor to have absolute ownership. Party which has suffered loss due to the breach of other party, some expressed conditions are made mandatory for the parties.
4. Term: The terms can be decided by the parties mutually but some rights like patent and know-how are related to statutory limitations that is they cannot be changed by the individual. In our Country, India the statutory period for patent rights is 20 years. In know-how the limitation for getting royalty is decided by Reserve Bank of India (RBI).
5. Termination and consequence: The rights for the termination of contractor are non-payment of contract price, material breach by the owner, suspension of work for exceeding the time which is already determined. The rights for the owner are unreasonable delay in execution of the project, not reaching expected performance in terms of quality and quantity of the work.
6. Exit management or remedies clauses:
If the dispute which arises can’t be dissolved, then to exit in an efficient manner without any disruptions the contract has to be properly drafted with the clauses which handle the exit.
Written By:
Akhila Penugondla
[3rd Year, BBA.LLB(Hons.)] under the guidance of Dr. Nagalatha Bathina, Associate Professor, Vignan Institute of Law.
Editorial Director:
Dr. Nagalatha Bathina, Associate Professor, Vignan Institute of Law.
Editors:
Dr. Praveen Kumar, Director, Vignan Institute of Law
Mr. L. Ashish Kumar, Assistant Professor, Vignan Institute of Law
Blog Managed By:
Taj Mahamood Baig [2nd Year, BA.LLB(Hons.)]