Contractual Licenses and Technology Transfer: Effective Cooperation Means

1. Open Forum on SPLTWIPOGeneva, 1-3 March 2006 Contractual Licenses and the Transfer of technology Francesco Macchetta

2. Contractual Licenses and the Transfer of TechnologyLicensing as one of the most effective cooperation means Licensing is one of the most effective cooperation means. In principle, it allows coupling the strength(s) of the licensor with those of the licensee(s) [in a so-called win-win situation]

3. Contractual Licenses and the Transfer of TechnologyLicensing as one of the most effective cooperation means It is one of the most effective tools for innovators in fast-changing technology-based businesses It allows licensors reaching markets where one does not have a significant commercial presence in much quicker time than trying to establish a direct presence and with a much lower investment/risk

4. Contractual Licenses and the Transfer of TechnologyLicensing as one of the most effective cooperation means It allows licensees with presence and knowledge in a market to become the partner of a technology leader (missing that presence and knowledge of the market) and access directly that technology and build its own knowledge of it, creating the basis for its own improved technology creation.

5. Contractual Licenses and the Transfer of TechnologyThe result of a negotiation Kind of licenses and their obligations (e.g. exclusivity, payments, guarantees, terms, termination) as established freely by the parties in the framework of governing national and international law (including Civil and Criminal law, IP law, Competition Law, Environmental law, market authorization provisions etc)

6. Contractual Licenses and the Transfer of TechnologyIPRs as one of the core elements Special nature of IPRs (e.g. patents): • Immaterial/intangible • Tagged to innovative technological results more than market power • A new currency in tech trade ?

7. Contractual Licenses and the Transfer of TechnologyIPRs as one of the core elements: knowing, obtaining and using them • An educational need/gap ? • Learning from experience (of others as well) • How to procure, use, negotiate IPRs: • The cost factor • The competency factor

8. Contractual Licenses and the Transfer of TechnologyContractual negotiations: The IPRs valuation and evaluation opportunity From the appreciation of the diverging views of the parties on value/evaluation (quantitative/qualitative, reciprocity, interaction) of the relevant IPRs to a de facto agreement on their ultimate relevance in the context of the overall agreement

9. Contractual Licenses and the Transfer of TechnologyThe negotiation process/finality Build thrust and agree on workable tailor-made contractual rules that suites the parties’ needs/wills/interests in the framework of the applicable national/international law.

10. Contractual Licenses and the Transfer of TechnologyThe governing laws: a personal view Any “link” between Contractual Licensing and Tech Transfer and (e.g.) SPLT ?

11. Contractual Licenses and the Transfer of TechnologyFrancesco Macchetta Thank you for your attention, and I look forward to our discussion !