The transfer of technology is the set of actions aimed at facilitating the commercial performance in the market of R & D activities carried out by companies, entities or universities.
The definition is very generic because there is no internationally accepted concept.
It consists of an atypical contract in which there must be a technological innovation, that is, elements created by the human mind and that can produce an economic performance in an industrial process.
In the present article, we intend to indicate the different modalities, as well as their main features:
1. Transfer of registered knowledge of Industrial Property: Patents, utility models, drawings, trademarks).
Industrial property rights are rights that are obtained by registration, and are transferable by the will of the owner. Therefore, they can be transferred by:
A) Assignment: With this modality, the full ownership of the right is transferred, assimilating to a sale.
Since the assignment has been formalized, the transferor may no longer use the transferred technology, since it belongs to the transferee, having paid a single price for it. It is important to regulate that the transferor makes available to the transferee all know-how for the exploitation of the Technology, and it is also important to establish a non-compete agreement and prohibit the use of the transferor.
B) License: Consists of a right of use on the technology, being assimilated to the lease.
The license may be exclusive or non-exclusive, depending on whether it is in the interest of one or more licensees, and should be regulated whether or not a sublicense is permitted.
The applicable territory must be determined and whether the consideration will consist of a single price or periodic fees. An important aspect is to regulate further improvements or developments of that technology to advance and determine who is the holder of such improvement.
2. Know-How Transfer
Unlike industrial property rights, since it is an unregistered right, it is important to detail and describe contractual know-how as well as to state explicitly who is entitled to the right.
At the beginning and at the end of the contract, there must be an indefinite confidentiality agreement. As is logical, a non-compete clause must be established detailing the products or services, sectors, etc.
Both the confidentiality agreement and the non-competition clause must be supplemented by criminal clauses setting out compensation for non-compliance.
3. Technological Development Contracts
It consists of an agreement by which two companies or entities agree to carry out a development of a technology project, for example a company and a university agree to develop a particular product.
In this type of contract, it is important to detail the purpose of the contract, detailing precisely the contribution of each of the parties. Also, the budget, the project management and the different phases of results should be detailed.
The most important part, is to agree ownership of the results, ie if the result is patentable, you must determine who owns it.
Source:: Abogado Freelance
