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Contractual Agreements to Maximize Gains - Technology Transfer Agreements

As the title suggests, technology transfer is a process whereby one party transfers its technology to other party for commercial purposes or for developing some new products. In other words, a technology transfer agreement is nothing but a type of IP license where the object of the contract is … an item of technology (whether embodied in a product, or covered by a patent [registered or applied for], or in the process of being developed).

As compared to normal IP licenses, technology transfer agreements are often more complex and technical. This is because the contracts will not only have to cover all the legal issues that are described in section C2 of the Handbook, but they will also have to effectively deal with all relevant technical and scientific issues relating to the invention that embodies the technology. Often, the negotiation of this kind of agreement requires the presence not only of a good IP lawyer, but also of an experienced scientist or a person who has profound technological expertise.

Major issues to be considered here relates to the use and exploitation of the particular technology that is intended to be transferred. In addition, the issue of eventual improvements made by the person or enterprise acquiring the technology has to be carefully dealt with. The duration of technology transfer agreements is normally shorter than other types of licenses. This is clearly linked to the often-short life-cycle of technologies that sometimes become obsolete within few years.



Technologies are often embodied in products that perhaps have an attractive shape, and that almost systematically carry a name and a logo. In other words, remember to negotiate in the same agreement the possibility of using also the registered trademark and industrial design that are going to be instrumental for the successful exploitation of the newly acquired technology.

Similarly, very frequently technologies are hard to operationalize, only based on the information contained in the patent. The effective use may need the disclosure of Trade Secrets and know-how, which you should remember to include in the same technology transfer agreement.


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