The transfer of knowledge and information about technology can take place in two ways: informally through transfer of knowledge, and formally through technology transfer agreements (contracts).
Informal transfer of knowledge is becoming more and more important in the academic environment as the mobility of researchers and students is greatly contributing to the dissemination of knowledge worldwide. Knowledge can also be transferred through publications, teaching, conferences, courses, presentations, meetings, informal exchanges and personal contacts between scientists, academia and industry.
In the context of formal channels of technology transfer, there is no such thing as a standard contract or agreement. Some universities and research institutions propose standard models as part of their IP policies, but such models are only to be used as a starting point, a support or a tool, and need to be adapted to the specific circumstances and requirements of each case. It is crucial to consult an IP lawyer from the beginning of the negotiation and in particular when signing the agreement.
There are different types of technology transfer agreements that are frequently used to transfer technology from lab to market.
Licensing agreements are legally binding contracts where the owner of intellectual property (IP) in a valuable technology (the licensor), gives someone else (the licensee) permission to use that IP in ways (terms) that are spelled out in the agreement.
These terms determine the rights of the licensee: a broad license for any purpose in any territory and field of use, or a narrow license only for distribution or manufacturing in defined territories or technologies, or somewhere in between.
Licensing agreements are like a big "cake" with multiple layers that negotiation partners may cut and slice to co-construct a "win-win" solution. A license is a consent by the owner to the use of IP in exchange for money or something else of value (e.g. cross licensing). It becomes an actual transfer when the licensor delivers the technology and knowledge to the licensee and the licensee learns how to effectively use, adapt and where possible improve the technology and knowledge.
Some licenses are royalty bearing and some are royalty free. Some are related to development of technologies and others to access to standards, manufacturing, or distribution. Despite their differences, licensing agreements are found all over the world in many types of technology relationships, from university to business, business to business or consortium to business, to name a few. With all their variations license agreements are an indispensable tool in technology research, development and commercialization.
IP licensing occurs in the context of various business and collaboration relations, such as mergers and acquisitions, joint ventures, research collaboration agreements, joint research and development arrangements, etc. Technology licensing only occurs when one of the parties owns valuable intangible assets, known as intellectual property, and because of that ownership has the legal right to prevent the other party from using it.
In today’s knowledge-based economies, the prevailing model of IP collaboration among academic and business organizations is “open innovation”, based on licensing deals among various participating partners. Therefore, there is a growing interest on the part of innovation stakeholders in acquiring more practical knowledge about licensing as a useful tool for transfer of knowledge and IP.
For more information about key terms of licensing agreement, preparation and licensing negotiation principles consult our guide on Successful Technology Licensing (STL) .
An assignment of IP rights involves the transfer of ownership of IP (patent, utility model, trademark, copyright, know-how protected by a trade secret etc.) from the owner (assignor) to the assignee (physical or legal entity) with permanent effect.
The assignment contract must accurately identify the subject matter of what is assigned. In case of patented inventions for instance, this may include granted patents but also provisional patent applications, including PCT applications, or trade secrets that are intended to remain as such.
The difference between licensing and assignment of IP is that in licensing relations the right to use the IP is temporarily transferred to the licensee, often giving the licensor the right to continue to exploit the same IP in a different field of use or territory. Under negotiated conditions a licensing agreement can be terminated and all rights transferred back to the licensor. On the other hand, an assignment of IP rights has a definitive effect, like selling tangible assets, thus the former owner will be permanently divested of the ownership.
Non-disclosure agreements (NDAs) or confidentiality agreements are legally binding agreements not to disclose confidential information that a party has learned, or not to use it for any purposes other than those specified in the agreement.
They are often used before an IP license or other agreement is established, when the licensee wishes to have further detailed information about the IP or technology concerned. In the context of a collaboration agreement for instance, both parties may take an obligation not to disclose or use the information regarding background IPRs of the other party.
An important condition for NDA to be efficient is to set up a clear definition regarding what information is considered confidential, who will have access to it, what are the measures to be taken in order to keep it confidential and to limit those obligations to a reasonable period of time.
Collaboration agreements or collaborative research agreements are concluded by two or more parties that wish to cooperate to develop and possibly commercialize a new technology.
The parties invest their human, physical and financial resources, assets (including background intellectual property rights) and skills. They jointly define the objectives and legal framework of the collaboration, including intellectual property rights ownership, access rights, benefits and risks sharing and rights to commercialize the research results.
This type of agreement may be used in the context of academic research collaborations, in particular under research grants, as well as for university-industry joint research projects, including PhD projects.
Consultancy agreements involve consultancy work by university professors and/or researchers who provide expertise services to an industry partner in exchange for payment, often on a personal basis, if allowed by the university’s policy.
In most cases, the resulting intellectual property rights are owned by the company, with limited rights of the researcher to publish his or her results. The IP ownership of developed results may also be shared, depending on the Institutional IP Policy of the academic institution and terms of the agreement.
When involved in negotiations, the university will try to preserve the right of the researcher to publish results of his/her work, while keeping information confidential for a reasonable period of time, to allow the company to protect IP and assure position on the market.
Sponsored research agreements govern the relationship between a university or research institute and a sponsor, that may be a government body or commercial entity interested in developing scientific results in a particular area of relevance for its business.
The R&D institution receives funding to support the research in return for preferential access and/or rights to IP deriving from the research results. Contrary to collaboration agreements, the sponsor does not necessarily participate in research activities and may not be interested in the commercialization of the results. The university / R&D institution usually owns the results and IP developed and grants a license (exclusive or non-exclusive) to the sponsor.
Material transfer agreements (MTAs) govern the transfer of physical assets and tangible research materials from the provider to the recipient that intends to use them for the purpose of its own research.
The transferred assets may include patented materials transferred through a license, biological materials, chemical compounds or software. The agreement defines the rights and obligations of the parties regarding the transferred materials, derivative materials, research results and related intellectual property rights.
Contract research agreements are concluded when a commercial company “hires” a university or a research institute to conduct research towards a commercial goal.
The objectives of the research are defined by the company and the goals are commercial, not academic. The contractor fully covers the research costs and IP protection and bears all the risks for the research. The results are usually owned by the company, with patented inventions or other intellectual property rights assigned by the university to the contractor.
Academic spin-offs (or spin-outs) are newly-created companies based on a new technology developed by a university or research institution.
The researchers involved in the development of the new technology often leave their original position at the university and end up in the new company. The university and the spin-off company usually share risks and benefits through different forms of joint venture arrangements. Spin-offs are often owners or exclusive licensees of the IPRs on technologies developed at the university.
A university research-based start-up is a company built on a university granted license for one or more technologies.
As opposed to a spin-off company, the founders of a start-up are not affiliated with the university where the new technology has been developed and the company’s financial resources are drawn from external sponsors.
The agreement concluded between a university or a research institution and a start-up company needs to address some key considerations such as: IP, financial conditions, management obligations, conflict of interest concerns, participation and support of the university inventor, commercialization or business plan with development milestones and a pathway to market launch and exit.
A joint venture is a business entity created by two or more parties pooling their resources with the objective of implementing a common business purpose. It is generally characterized by shared responsibility, governance, risks and benefits.
For example, one party may contribute with technology or know-how and the other party may provide investment. This is often the case in joint ventures between academic institutions and industry partners. One of the important factors of successful joint ventures is an early adoption of intellectual property rights principles chart, regulating issues such as the use of the proprietary information and background IP that each party brought into the collaborative business.
There are two fundamental forms of joint ventures: the equity joint venture and the contractual joint venture.
The equity joint venture is an arrangement whereby a separate legal entity is created to act as the vehicle for carrying out the project and commercialize the final result – foreground IP.
In a contractual joint venture, the parties come together for a particular business project and sign a contract outlining the terms under which they will work together. The parties do not set up a separate legal entity for the project but work together in partnership, sharing the risk and profits of the venture on the terms set out in the contract.
Different contractual means for the commercial transfer and acquisition of technology can be used in either form of joint venture arrangement.
In order to support academic institutions in the development and negotiation of technology transfer contracts, WIPO provides model agreements between academic institutions and industry partners. Since licensing is the most frequently used means for technology transfer, the models provide insights into different types of licensing agreements such as know-how licensing, exclusive, software licensing, etc. The models are accompanied by guidelines for customization focusing on challenging issues for technology transfer offices, such as negotiating an audit for royalty rates on the revenues collected by industry partners from sub licensees.
