We at Patracode have a team of Contract law experts from various fields of technology who have a vast experience of drafting various agreements required during a business transaction. Our team of Attorneys who are specialized in Intellectual Property Law and have dealt in starting various verticals of contracts starting from drafting, vetting, reviewing as well as negotiating all sort of IP agreements which are involved in a business.
Technology transfer is a process which involves the transfer of technology, expertise, know-how or system developed by one individual, company or organization s handed over or moved to another organization or individual. It is the main process that helps in the development of discoveries and research into products or practical applications.
The main objective of technology transfer is commercialization of developed technology, know-how, new product or service or in the improvement of an existing product or process. The transfer would be simple or complex depending on the technology which is to be transferred. Technology transfer may occur between one country to another country or from one industry to another industry, or from one research laboratory to an existing one or a newly developing one or new invention.
The technology transfer involves a high level of skill in how the technology will be transferred, what are the major legal contracts involved and what type of agreement is entered into by the two parties involved in the technology transfer. All these stages demand a lot of skill and understanding both on the technical front as well as legal front. One may wonder why such a process is required.
The answer to this is to improve or maintain competitive position of business in the market place where competition is on the basis of price alone, so improving efficiency becomes highly important which is possible by improving or acquiring new machinery and equipment. For Small and Medium-sized Enterprises (SMEs) investing in technology development is highly expensive and risky, as the innovation process involves many highs and lows so they prefer to transfer technology rather than developing it in-house.
Technology transfer is the process that takes place between the owner of the technology that is in question, and the buyer of the rights to use this technology, through some standard legal procedures. The owner is known as the ‘transferor’ and the buyer is the ‘transferee’ and the technology transfer process does not only include the purchase of the technology, but may include the right to use it, the purchase of the licenses of the patents and other protection as well.
There is an immense involvement of skill before we reach to the position to get into any technology transfer agreement. It demands a lot of negotiation and various factors are needed to be taken care of, like what level the technology is to be developed, the actual requirement of the buyer or the ‘transferee’ and their capability in terms of technology, the efficiency of the technology in terms of cost and the importance of it, the support provided during and after transfer for adapting the new technology, whether long term or short term relationship between parties, issues like liability, indemnity, warranty etc. Since the process of technology transfer is a legal process, it means that both the parties involved enter into a relationship that is based on mutual agreements, by agreeing on terms and conditions through which technology transfer would occur.
These various methods and legal arrangements overview is explained below:
The Sale or Assignment of IP Rights.
It is a type of transfer in which the owner of the IP rights transfers all his exclusive rights without any limitation to the purchaser and is called as an “assignment” of such rights taken place.
The contract that is entered into, known as the ‘Know-How’ contract can be in either an intangible form or also in a tangible form. The tangible form of transfer is through photograph, illustrations, manuals, diagrams, process flow charts etc. and the intangible form of transfer includes training or explanation from the know-how transferor to transferee. Such provisions could be included in a license agreement.
A consultant agreements or contract is between the consultant and the client, forming an arrangement by which the client buys the services of the consultant. In such a business arrangement not only the technology is acquired but experience is also gained by learning, working and engaging with the consultant.
In a franchise model or distributorship model the commercialization of IP is generally done by investment in one party and transferring his reputation, know how, expertise by another. It general involves trademark or service mark or a trade name or trade dress.
Joint Venture Agreements.
A joint venture agreement is an arrangement between two entities which could be contractual joint venture or equity joint venture. The equity type results into a separate legal entity and the contractual is based on the terms and condition agreed upon. The prime motive of the arrangement is commercial transfer and acquisition of technology.
License or License Contract.
License is the arrangement for commercialization of IP rights by rendering permission to the licensee to a patented invention or any IP right which covers the “acts” like the making or using of a product or using a patented process to make a product. The license is rendered subject to certain conditions, which will be mentioned in the agreement to license.
Acquisition of Equipment and their Capital Goods.
By sale and purchase of equipment and other capital goods can lead to commercial transfer and acquisition of technology.
We at Patracode cater to all type of IP commercialization agreements and contracts. Our attorneys having a technical background gives us an edge on others to understand, co-relate law and technology for drafting various agreements.