Tech Transfer Agreements

April 12, 2021

The type of transfer is only one aspect of a potentially important negotiation between the rights holder and the party who assumes it. Even if the parties have agreed on the principle, the creation of a contract that adequately reflects the intentions of the parties, provides the necessary protection and foreshadows potential problems and conflicts, can become complex and requires a good knowledge of both contract law and the practical aspects of technology transfer. Grant-back obligations: A licensing agreement may require a licensee to disclose and transfer all improvements (including acquired know-how) to the technology granted during the licence period. In the recitals, be careful that, if it is not certain that a party has all the transferred rights, this property will not be permanently declared. The term "Part A owns all the patents" may be considered as a representation by Part A or as an admission of Part B if, in fact, neither party intended to obtain such a commitment or authorization. A technology transfer agreement is like any other IP transfer or license, but has a turning point. A "regular" assignment or license of a patent, copyright, business secret or trademark generally takes into account only the parties. However, technology transfer must recognize external interests. If the federal government funds research, which is a very common practice -- the government must retain a licence to use the technology. Similarly, when a university exploits intellectual property, it must take into account the rights of the researcher and others at the university, as they are governed by a policy that the university probably has for all inventions and discoveries.

As in any agreement, the parties to a technology transfer agreement have different views on what an agreement makes beneficial to them. The university/inventor would prefer to retain ownership of the discovery, the license fees for the use of discovery and the provision of information and technical assistance (paying) to the user. Conversely, the developer/user would prefer to assign ownership of the invention (not conceded), with technical assistance at least (or at least a minimum fee). Such agreements focus on IP and generally cover: some of the agreements described above in technology transfer agreements should raise prices, quantities, quality or varieties of goods and services within the limits of competition, provided they are not properly compared to all the rights that flow from intellectual property rights. Therefore, unreasonable conditions are not covered by the protection afforded in Section 3 (5) of the Competition Act 2002 and, therefore, the Competition Commission of India may be invited to review the anti-competitive agreement under Section 19 of the Competition Act 2002 and these agreements may be struck down.

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