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1 Waiting for the Organiser The webinar will begin shortly 1

2 Successful Technology Transfer to Southeast Asia ASEAN IPR SME Helpdesk 2

3 Welcome to the Webinar ASEAN IPR SME Helpdesk Project Executive 3

4 Webinar Interaction Tools Turn on full screen here Raise your hand here Send the IP expert a question here Webinar 24 hour technical support number: Contact Us section 4

5 Snapshot: Helpdesk Free Services Enquiry Helpline Website & Blog Training Workshops & Live Webinars E-learning & Business Tools IP Guides & Newsletters 5

6 Today s Speaker Philippe Deltombe Firm: UbiQuity Brussels Location: Brussels, Shanghai phd@ubiquity-law.eu Philippe s practice covers innovation sectors small and mid-sized players projects: from Europe to China and South East Asia. He provides advice and support in areas ranging from IP protection strategy to technology transfer guidance, including R&D funding assistance. Philippe counsels clients in various innovative sectors such as IT security, e- business, entertainment software, biotechnology, nanotechnology, water treatment and renewable energy. 6

7 Agenda 1. Thinking of Transferring Technology? The first steps 2. Picking the Right Partners 3. Structuring your Technology Transfer 4. Contracts 5. Making Headway in SE Asia 6. Take-away messages Know before you go 7

8 Poll 1 Question: Do you have business dealings in Southeast Asia? (please select 1 answer only) A. Yes, established for several years B. Yes, just started C. No, but I have business in other Asian countries D. No, only in Europe currently, but I m considering it 8

9 Why Transferring Technology in South East Asia? Legal environments predictability Existing innovation ecosystems Local education level Operational costs effectiveness Economic growth/demand rates Political factors/stability 9

10 The first steps the human factor is key Identifying the right market Picking the right partner Managing time-based uncertainties Involving local stakeholders IP due diligence/ip registration 10

11 IP Registration in ASEAN countries Patents Singapore: first filing obligation Thailand: timing hurdles Trade secrets Thailand: alternate method to patents Singapore, Vietnam, Indonesia and Malaysia: vital need for NDAs Copyright Singapore: absence of registration Malaysia, Indonesia and Vietnam: freedom to register Philippines: mandatory registration 11

12 IP Registration in ASEAN countries Trademarks Malaysia: time-saving registration Indonesia: protection of famous marks Philippines: strict regulation on actual use of registered trade marks Myanmar: unusual evidence of actual trade mark usage IP enforcement in ASEAN: Singapore and Malaysia definitely start the race from the first row! 12

13 Picking the Right Partner A. Intuition? B. Flair? C. Sixth sense? D. Luck? Including a great deal of time, hard work & determination 13

14 Poll 2 Question: Which sector best describes your business? A. Water Sector B. Infrastructure C. Clean Tech D. Manufacturing E. Other 14

15 Structuring your technology transfer Scope Turnkey agreements Research & development Simple use or technical assistance Structure Joint venture vs. Licensing 15

16 The Technology Transfer Agreement Used by technology supplier to transfer technical information Regarding a special technical process In return for a financial consideration a) To produce or develop a certain product b) Install or operate machines or devices c) Or provide services 16

17 Joint Venture Legal organization that takes the form of a short term partnership Jointly undertaking of a technology transfer for mutual profit Each party contributes assets and shares risks Why Joint Ventures? Gain entrance into foreign markets Foreign companies bring new technology Domestic companies have established relationships / requisite governmental documents / entrenched in the domestic industry 17

18 Licensing License Agreements The owner of the intellectual property rights (the licensor) Grants a second party (the licensee) the rights to: Make, use and sell such IP with or without financial consideration The legal ownership of such intellectual property remains with the licensor 18

19 Contracts Helpful prerequisite Non-disclosure agreements Legal documents translation License agreement usual terms Upfront payment vs. royalties (or both of them?) Quality assurance (specifications, standards, premises inspection rights) Warranties (ownership of IP, absence of infringement) Support & Training (mix of license granting and licensor provision of support and technical assistance) New IP generation by licensee/licensor (need for clear delimitation of rights ) 19

20 Making headway in South East Asia Involving the local authorities The virtues of negotiation The human factor Applicable law & jurisdiction Legal proceedings pitfalls 20

21 Case Study When technology transfers look like more a one-shot deal than a carefully planned long-lasting cooperation Micropayment solutions - Gaming/Telco sectors (where legal & technical compliance are critical issues) When technology transfers look like more you are the (only) one in charge of setting up the whole business ecosystem Renewable energy Residual plantation biomass/pellets plant (where coordinating the production chain requires a whole load of resources) 21

22 Take Away Messages Time management: key to mutual understanding Local stakeholders: key to local peculiarities understanding Spreading the risk: key to better protecting your IP Registering your license agreement: key to enforcement 22

23 Q&A Philippe Deltombe Firm: UbiQuity Brussels Location: Brussels, Shanghai Philippe provides advice and support in areas ranging from IP protection strategy to technology transfer guidance, including R&D funding assistance. Philippe is the co-founder of UbiQuity Lawyers, the network of boutique business law firms bridging western, central & eastern Europe to China and Southeast Asia with focus on intellectual property. 23

24 Helpdesk Country IP Factsheets ASEAN countries Check it out NOW! To access all our publications click here 24

25 Other IP Support Services For information about IPR in China, please contact the China IPR SME Helpdesk Telephone: +86 (10) Online: For information about IPR in the EU, please contact the EU IPR Helpdesk Telephone: Online: 25

26 Join our upcoming events Upcoming Training Events in Southeast Asia: 6 May, Jakarta: Indo Leather & Foot Wear 2014 Workshop Machines for Leather Industry Upcoming Training Events in Europe: 28 May, Dornbirn: Intellectual Property Protection in Singapore and Thailand 27 June, Cardiff: Intellectual Property Rights in ASEAN Click here to access our Event Calendar 26

27 The ASEAN IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to IPR in South-East-Asia Helpdesk Enquiry Service Training & Events Materials Online Services - For more information about our services and how the ASEAN IPR SME Helpdesk can add value to SMEs, please contact: Telephone/Hotline: