Intellectual Property for Technological Capacity Building, Economic Growth and Development

Licensing as a Tool for Technology Transfer in case of Intellectual Property

 1.  DO YOU NEED TO ACQUIRE TECHNOLOGY?

Do adequate problem analysis :

•Problem may be non-technical

  -  A management problem

  -  An organizational structure problem

  -  Etc.

•Need a technical solution, then

  -  Ascertain what you want

  -  Whether available in-house

              -  If not, acquire elsewhere

2.  WHAT IS NEXT?

To acquire the appropriate technology

•The choice of partner

•The method of acquisition

•Prepare for a negotiation process

•

Note:  A good Patent Search may be able to help you to   identify the right partner and the right type of   technology to acquire.

 3.  TYPES OF LICENSES

 ·   Exclusive License

-  Licensee (Technology Buyer) the only entity to   exploit the technology

-  Not even licensor (Technology Supplier) permitted   to use the technology

  · Non-Exclusive License
  - Licensor can grant any number of licenses to use   the technology

  · Sole License
        - Licensor grants right to one licensee but reserves right for himself



4. THE NEGOTIATION PROCESS

·   Can be a Complex and Difficult Undertaking 

          - Involves competent peoples for consultations on legal, commercial & technical issues

          - Involves compatible parties who are able to work together and cooperate toward
             common goals

·   Licensor May Use Standard Licensing Agreements

         -  Licensor put forward initial bargaining positions
         -  Licensee should be aware of alternative possibilities

         -  Never press any objective into standard legal model 

·   For Individual Inexperienced Licensee (the buyer)

           - Obtain professional service being the best solution
           - Keep at hand a checklist of typical license provisions during negotiation
           - Consult local Licensing Executive Society, if any

5.  SOME KEY ISSUES AND ADVICES

Since most technology buyers are from developing countries, they should pay special attention on the following :

·  Know exactly what is wanted

        - Do adequate problem analysis
        - Collect sufficient information for decision- making
        - A comprehensive patent search is helpful

  *  IPR determines value of technology

  *  Lapsed patent or unprotected technology is   free of charge

·  Desired end results guaranteed

       -  A guarantee that technology would achieve desired   end results

       -  Technology supplier obliged to supply all relevant   expertise and know-how

       -  No such thing as “buy at your own risk” 

·  Maintenance of IPR’s

      -  Ensure technology patented in country concerned

     -  Technology supplier responsible for validity &   maintenance of patent

     -  Value of technology or royalty directly related to IPR’s

 · No unfair tie-in clauses

     -  Minimum tie-in obligations, such as

     *  Requirement to purchase equipment, raw   materials, etc. from licensor

     *  Territorial restriction on sale of products   concerned

     *  No development on technology by licensee

·  No separate fee for training

    -  No extra charges for training of manpower, except

     *  Out of pocket expenses

  · Right After Expiry of Agreement
       - Licensee should have the right to continue to use the technology
       - Otherwise, licensee would be left with installations & assets that cannot be used

· Use of Own Trademark
      - Licensee can use own trademark for products made by the technology
      * Own trademark has reputation
      * Licensor’s trademark not registered