Technology Transfer Agreement

This Regulation should apply only to agreements in which the licensor authorises the licensee and/or one or more of its subcontractors to use the licensed technological rights, where applicable after the continuation of research and development by the licensee and/or its subcontractors, for the purpose of manufacturing goods or services. It should not apply to licences under research and development agreements covered by Commission Regulation (EU) No 1217/2010 (4) or to licences under specialisation agreements covered by Commission Regulation (EU) No 1218/2010 (5). Nor should it apply to agreements the subject matter of which is merely the reproduction and dissemination of copyright-protected software products, since such agreements do not concern the licensing of a manufacturing technology, but rather resemble distribution agreements. Nor should it apply to agreements for the establishment of technology pools, i.e. technology pooling agreements aimed at granting them to third parties, or to agreements for which the pooled technology is granted to those third parties. the access of third-party technologies to the market is restricted, for example by the cumulative effect of parallel networks of similar restrictive agreements prohibiting licensees from using third-party technologies; The main concern on the academic side was that the mix of commercialization and academic research will cause academic researchers to abandon their knowledge research center and focus only on commercially promising technologies. Universities thought that corporate money would „dirty“ the hands of the institution. The main reason for the current wave of „commercialization of discoveries“ was the Patent and Trademark Law Amendments Act of 1980 or Bayh-Dole Act, which allowed for the transfer of technology between researchers and commercial enterprises. The premise of this law is that inventions created with federal funds should be licensed in a manner that promotes their commercial development for the common good. The law achieves this goal primarily by allowing parties developing state-funded technologies to retain patents in this research, while retaining the government`s right to use the invention.

There are different types of contractual relationships through which technology can be transferred. Companies and institutions must assess on a case-by-case basis what type of relationship is most appropriate and negotiate the specific terms to be included in the agreement. A number of market factors, as well as factors that are internal or specific to the technology in question for the recipient, influence the type of agreement reached between the two parties. With regard to intellectual property, account should be taken of the fact that intellectual property rights constitute a pro-competitive monopoly and that their holder should not exercise its right by abusing its monopoly, for example by imposing anti-competitive obligations on the licensee. Both parties must decide how personal the relationship with the other party is and whether assignments and sub-licenses of the technology or the agreement itself are allowed. While much of the technology transfer between universities and industry involves the transfer of high-tech intellectual property, this is not the whole universe of technology transfer. Trademarks can be licensed as a main element or as an additional add-in to give stature to the final product. This first type of trademark license is not a major problem for the university; a university uses its trademarks, the marks become merchandisingable, and the university enters into licensing agreements with the parties to manufacture licensed products. The university has only a low risk of exposure to this type of licensing agreement. .