Overview Agreements in R&D and Technology Transfer

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1 Overview Agreements in R&D and Technology Transfer NEGOTIATING INTERNATIONAL R&D AND Heike Huisken TECHNOLOGY TRANSFER CONTRACTS INTELLECTUAL PROPERTY RIGHTS, VALUATION AND DISPUTE RESOLUTION Brussels, 12 November 2010

2 R&D refers to creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society, and the use of this stock of knowledge to devise new applications. (OECD)

3 Technology Transfer is the process of sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services. (wikipedia)

4 R&D + TT-Agreements Money Source Money Collaboration Exploitation Staff Research Partner A Research Partner B Research Partner X Confidentiality Staff Exchange Sub-order Supply Consultancy Endowed chair Third Party

5 Preliminary Agreements Collaboration Contract research R&D Material transfer License Sales Joint venture Exploitation Technology transfer

6 Preliminary Agreements Binding Decleration with intention to be bound Obligation to conclude a main contract Precontract Letter of Intent Memorandum of Understanding Interim Agreement Option Agreement

7 Contract is a legally binding agreement between two or more parties which, if it contains the elements of a valid legal agreement, is enforceable by law or by binding arbitration. (wikipedia)

8 Funding Legal Basis Public International organisations, EU, national, regional, trusts Funding act Rules for participation Cooperation agreement Privat Companies, trusts Research contract

9 Public funding Funding Authority Research Partner A Research Partner B Research Partner C Research Partner X Research Partner E

10 Public Funding Aims Funding Authority Greater political aims Beneficiray R&D Results Collaboration Money

11 Public Funding Content Amount of funding / R&D Activity Ownership Access Rights Exploitation Protection

12 Contract Research Sponsor (private) Partner A Partner B Partner C Partner X

13 Contract Research Aims Sponsor Technology paiment Beneficiray R&D Results revenues

14 Contract Research Content Subject matter of research Payment Ownership Access Rights Exploitation Protection Publication Subcontracts Obligation of sponsor to cooperate

15 Collaboration Money Souce Partner A Partner B Partner C Partner X

16 Collaboration Aims Common Goal Joint planning of R&D project Self financing of work shares Sharing of results

17 Collaboration Content R&D obligations Ownership Access Rights Exploitation Protection Publication Management organisation

18 Exploitation Joint Venture Sale License

19 TT What to tansfer? Copyright Know-How Trade Secret Trademark Patent General Knowledge

20 License Licensor User right Technology Value Licensee

21 License Content Grant of license Type Right Territory Payment Type Invoice Due Accounting Control

22 License Content IP maintenance Foreground Defence Liability

23 Buyer Contracts Purchase Transfer of Ownership Seller Technology Value

24 Purchase Content Product Price

25 MTA User right for IP Material owner Material Value Research Results Material user

26 MTA Content Material Payment User Right Ownership Access Rights Exploitation Protection Publication Confidentiality

27 Partner Contracts Joint Venture Technology Purpose Partner Control IP New Entity Control Revenues Assets Expenses

28 Joint Venture Content Purpose Type of entity Duration

29 Preliminary Agreements Collaboration Contract research R&D Material transfer License Sales Joint venture Exploitation Technology transfer

30 Confidentiality public Money Source private Partner A Partner B Partner C Partner X 3 rd party

31 Confidentiality agreement Content Secrecy obligation Right of use Duration Contract Secrecy Documents / Material

32 General Contracting parties Preamble Contract Number Duration Warranty / Liability Dispute Resolution Choice of law Jurisdiction Severability clause Dates Signatures

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