Technology transfer agreements: Key points

In this Article Dr Maria Anassutzi, Intellectual Property Expert, analyses the issues involved in an intellectual property rich technology transfer and discusses the various methods of innovation transfer.

1) Very often research (whether undertaken by Universities or other companies) has as its ultimate goal its commercialization. This can be done either by: (i) setting up (or spinning-out) a new company with access to the intellectual property rights (IPR) of one party (and sometimes to the facilities and services of that party); or by (ii) entering into a commercial licensing relationship.

2) For a collaboration to take place there needs to be an agreement between the parties in place clearly setting out the contributions of each party and of course the rewards should the technology be proved successful. This is achieved by entering into a Technology Transfer Agreement, which addresses the following:

1 Nature of the IPR involved/transferred

Define exactly what rights are to be transferred.

2 Method of the transfer

The next most fundamental issue to be resolved is the method by which the IPR will be transferred from one or more parties, that is, by assignment or licence.

• Assignment
  An outright assignment gives the assignee greater freedom in relation to the technology, since in a typical assignment, there are few, if any, controls placed on the assignee by the assignor.In the event of insolvency, the assignee has an asset that can be sold to create value for the shareholders. Of course, if the assignee has become insolvent it may be because there is no market for the product. However, if the product has failed for other reasons, such as lack of marketing support, lack of follow-on funding, or issues affecting customers a willing buyer may exist for the technology. The practical benefit is that it should be easier (or cheaper) to raise funds if the assignee has some form of assets.Investors usually prefer to invest in a company which owns and has freedom to use all of its assets. If an outright assignment is not possible, this can also be achieved with an exclusive licence.
• Licences
  A licence gives the parties a greater feeling of control and also an ability to participate in any successful commercialisation of the technology through royalty streams, as well as being able to participate in any growth of the spin-out business as a shareholder. A licence also ensures greater flexibility for the party; it may be possible to provide that the licence terminates if certain conditions are fulfilled (for example, if the licensee fails to exploit or to exploit successfully the transferred technology). The licensor then has the option to take back the licence and perhaps proceed with a new licensee.

A compromise worth considering is a licence with an assignment trigger built in. The trigger can be linked to the value of the licensee, the return to the licensor(s), or to some other factor. In this way the licensor(s) are protected at a time when the spin-out is most vulnerable and, from the licensee’s point of view, should it succeed, it is very likely that it will end up owning the technology outright.

In other scenarios, the licensee can be expected to agree to certain performance criteria. These will often be linked to the number of sales or revenue generated from sales or other commercial exploitation of the licensed technology. Failure to meet the criteria will see the licence come to an end or for the licence to become non-exclusive instead.

3 Consideration

The consideration for the transfer of technology can be made up of equity, up-front payments, royalties, or a mixture of all three. This tends to be an area which is most heavily influenced by policies adopted from time to time by the various parties to the agreement. Other factors may affect the value, for example, where one or more of the contributors to the technology was not an employee, but for example, a post-graduate student or consultant. In fact, a post-graduate student will generally fall outside the definition of “employee” under the Copyright, Designs and Patents Act 1988, and so the IPR may not belong to the university.

4 Other rights and obligations

Whatever the nature of the IPR transfer, the parties need to agree what continuing rights (if any) the parties will have to use the IPR. If a party is a university it is generally agreed that the university can continue to carry out non-commercial research and teaching using the transferred technology. However, it is worth investigating whether there are existing research projects, such as PhD theses, which need to be completed. If so, specific rights should be carved out of the transfer agreement as necessary to ensure that these projects can be completed. Also it is important to have a clear agreement as to which party will bear and be responsible for: (i) any prosecution and other protection of the transferred rights costs (for example prosecution of patent applications so that they become patents granted!) and (ii) any regulatory licences and approvals.

5 IPR Infringements

The key question to be addressed is which party will have primary responsibility for dealing with any IPR infringement of the transferred technology. It is important for the spin-out company/licensee to ensure that it has the appropriate rights to take action against a third party which is infringing the transferred technology in some way.

This article is for general purposes and guidance only and does not constitute legal or professional advice.