TRANSFERENCIA DE TECNOLOGÍA

1. TRANSFERENCIA DE TECNOLOGÍA Aspectoslegales

2. Technology Transfer INTRODUCTION PILA M5 , 24-27May 2010

3. Importance of TT Key tool in modern economy the acquisition of technology and its diffusion foster productivity growth The position of WIPO, OECD, World Bank, European Commission, etc. Correspondence to EU Lisabon Strategy PILA M5 , 24-27May 2010

4. Understanding of TT • No common legal definition • Early attempts of international regulation • Code of Conduct under UN auspices • WIPO understanding of „technology” • the systematic knowledge for product manufacture and service provision in industry, farming and commercial fields • Understanding of „transfer” PILA M5 , 24-27May 2010

5. TRIPS and TT Acuerdo sobre los Aspectos de los Derechos de Propiedad Intelectual Relacionados con el Comercio (TRIPs) • Article 7 • IPRs should contribute to the promotion of technological innovation and the transfer and dissemination of technology. • Article 28.2 • Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts. • Article 8.2 • Preventionof abuses that would limit technology transfer • Art. 40 • Necessity to control of anti-competitive practices in contractual licences PILA M5 , 24-27May 2010

6. TRPIS and TT • Article 66.2 • establishes obligation for developed states to introduce institutional policy stimulating technology transfer to least-developed countries • Mandatory character of the obligation • Difficulties in enforcing the provision • understanding of TT • different views of assistance, stimulation of TT, etc PILA M5 , 24-27May 2010

7. TT definition • EC regulation on TT • IPRs’ assignment or licencing agreement • related to sale and purchase of the product, • provided that transfer of IPRs does not constitute the primary object of the agreement • Not universally binding • Applies only to in competition law • TT as practicescontrainingcompetition PILA M5 , 24-27May 2010

8. TT agreements classifiaction • assignmentagreement • theownership of university IPR is transfer to theotherentity, • Licensing • greementauthorizing third party to useuniversity IPR for a regularstream of cashflows to university. • cross-licensing • an agreementbetweenuniversity and third party to alloweach party use of oraccess to specifictechnologiesowned by theother. PILA M5 , 24-27May 2010

9. TT agreements classifiaction • R&Dagreement • universityspecializesinresearch, conductsresearchin a specificarea on behalf of a sponsoring firm. • joint orcooperativeR&Dagreement • university and theother party agree to cooperatein a specificarea of R&Dor a specificproject, coordinatingresearchtasksacrossthe partner and withsharing of researchresults. • researchconsortiumagreement • universitywithmultiplemembersformedconsortium to conduct joint researchin a broadarea, ofteninitsownfacilities. PILA M5 , 24-27May 2010

10. TT agreements classifiaction • material transfer agreement • agreement on transfer and use of proprietary research material that is made available by the owner to an academic or research institution or commercial entity that wishes to use the material for its own internal research purposes • spin-off/spin out company • foundation of a company independent from university, based on university IPR and aimed at it commercialization. PILA M5 , 24-27May 2010

11. TT and High Education Institutions • Third mission for universities • Engines of innovations • Transfer of technology orknowledge? • Issues to be solved in TT context • Need for IP policy (regulation)orcodes of conduct • Importance of TT office • Ensuring background conditions for TT • Managing of TT process PILA M5 , 24-27May 2010

12. Prerequisities of TT in academic environment • Regulated disclosure of innovative research • provides basic information for the patentability assesment • avoids uncontroled premature disclosures • introduces obligations for the inventors and for the university • must be itself confidential • addressed to non-employees PILA M5 , 24-27May 2010

13. Prerequisities of TT in academic environment • Ownership of research results. • university must be the owner of technology transferred. • relations with employees and non-employees • employees, students, phd students, visiting professors, etc • relation with external institutions • Commissioned research • Sponsored research • Collaborative research PILA M5 , 24-27May 2010

14. Prerequisities of TT in academic environment • Revenue sharing (income distribution). • Clear principles for revenuedistribution • Identification of personsentitled • Inventors • University • Unit involved • others • Staticor progressive system? • shouldtheinventor’spercentagedecrease • Net orgrossincome? PILA M5 , 24-27May 2010

15. JagiellonianUniversityexample: distribution of profitsfromthecommercialization of innovativeprojects

16. Prerequisities of TT in academic environment • Other relevant issues • Awareness raising and education • basic skills covering intellectual property and knowledge transfer • training actions for students as well as research staff • Facilitation of knowledge dissemination and further basic and applied research • Openness for international research and TT transfer • Liability in context of research • For work performed • Product liability PILA M5 , 24-27May 2010

17. Recommendations • ownership of intellectual property and the granting of exclusive licences should be carefully assessed, with a closer view to the purchaser of technology • licences for exploitation purposes should involve adequate compensation, in particular financial • researchresults having several possible application fields, exclusive licences granted without any limitation to a specific field of use should be avoided • universities should reserve adequate rights to facilitate dissemination and further research PILA M5 , 24-27May 2010