Negotiating And Drafting Technology Transfer Licensing And Ip Agreements

More than a decade ago, Michala founded her own consulting firm, which she currently heads, which provides business and legal solutions to multinationals, public sector institutions and international organizations. As an international lawyer (in England, France, Canada and the United States), she advises on compliance (including anti-corruption and corruption, anti-money laundering and sanctions), trade finance, import and export, licensing, distribution, agency and foreign direct investment. (ii) “grant back clause” As part of a “grant back” clause, the taker grants the grant holder the rights to the licensee`s technology improvement. It is imperative that the agreement provide that the extent of such an improvement is clearly defined. Terms often negotiated under option agreements include: third, a potential immature licensee may unknowingly put himself in danger. For example, suppose a transferee has a patent with 10 independent claims and the patent holder will strive to obtain 10 different licensing agreements. If one of the potential licensees feels that he is threatened by the agent during one of the first conversations, he can sue the patent holder. If the potential licensee declares the patent invalidated, the licensee not only loses a licensing agreement with the potential licensee entitled to the dispute, but is also prevented from entering into licensing agreements with the other nine targeted licensees. What further complicates this scenario is that there is no definitive and static definition of what poses a threat. A technology transfer contract often involves the transfer of sensitive business know-how or information and trade secrets. In the event of an infringement, the licensee could be threatened with financial harm, which could also cause harm to the value. It is essential that the agreement contains certain strict confidentiality clauses.

The program provides a comprehensive overview of all important issues that must be considered by the licensee and licensee in the processing of international technology transfer and licensing agreements. The parties. For a university: the parties must be authorized signatories. Sometimes high-level members of a university department think they have the power to enter into legally binding agreements on behalf of the university if they do not. In a technology transfer contract, fees can be set on the basis of a lump sum payment or a combination of the two. When setting conditions, it is possible to have different calculation methods for different types of intellectual property (IP) and even different pricing mechanisms. For example, the pricing of a standard patent (SEP) (a patent that is a technology that is an industry standard) can be evaluated in a totally different way than other patents involved in the transaction. SEPS pricing is generally conducted on fair, reasonable and non-discriminatory terms (FRAND conditions) that differ from the terms and conditions of the patent license. The benefits of a different pricing mechanism reduce the risks, as if one of the patents is declared invalidated, it has no impact on the calculation of royalties for other licensed patents.