Knowledge Transfer | Accelerating Innovation Charlyne Rabe
CONTRACTS
FOR TECHNOLOGY TRANSFER
Charlyne RABEKT Legal Advisor
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
• KT group aims at disseminating CERN’s Knowledge and Technology for the benefit of Society.
• Such dissemination always requires legal frameworks.
• One of the services provided by KT office is the negotiation and the drafting of such TT contracts.
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
I. Overview of TT contracts
II. Highlights on a collaboration agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
I. Overview of TT contracts
Technology transfer contracts are aimed at regulating the CERN technology transfer activities.
CERN technology transfer activities means activities where CERN transfers its technologies or uses them to create new technologies for applications in research domains other than Particle Physics or for commercial exploitation.
LOGO
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
I. Overview of TT contractsList of agreements handled by the Knowledge Transfer Group
Non-disclosure Agreement
Collaborative R&D Agreement
Contract Research Agreement
Joint Ownership Agreement
Consultancy and/or service agreement
Consortium agreement (IP part)
License Agreement (including software license)
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Collaborative R&D Project
NDA
Collaborative R&D Agreement
Joint Ownership Agreement
Joint Ownership Agreement
Licence Agreement
License Agreement
License Agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Collaborative R&D Project
NDA
Joint Ownership Agreement
When and why?• Each time confidential information is exchanged between CERN’s
employee and a third party,• To protect information which are not covered by a patent yet or which
are not patentable but that you want to keep secret (ex: Know-How).
What information should be included? • Identification of the parties, the confidential information to be
disclosed, the purpose of the NDA, restrictions regarding the use and the disclosure of the confidential information.
What should NOT be included? • No license or transfer of IP
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Collaborative R&D Project
Joint Ownership Agreement
NDA
Collaborative R&D Agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Collaborative R&D Project
Definition
IP Sharing
Joint IP protection conditions
Joint IP exploitation conditions
NDA
Collaborative R&D Agreement
Joint Ownership Agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Collaborative R&D Project
Joint Ownership Agreement
NDA
Collaborative R&D Agreement
Joint Ownership Agreement
Joint Ownership Agreement
License Agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Final step of the technology transfer process : the exploitation of the technology through a license agreement
• Definition • Standard clauses
• Scope of the license • Financial conditions • Technical support • Additional return to CERN • Acknowledgement of CERN• Duration of the license, termination conditions• Warranties and Liabilities
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Collaborative R&D Project With a public external funding
(Ex : EU Project)
Joint Ownership Agreement
Agreement between the Commission and the Consortium- Statement of work- General Conditions- IP rules non-negotiable
Agreement between the partners and the project coordinator- Work organization- IP specific provisions- Liability - Future exploitation and dissemination of the Results
NDA
Consortium Agreement
Grant Agreement
The Partners have less autonomy for the negotiation of the consortium agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on Collaboration Agreement
LOGO
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
Section Subject
« Between» • The Parties
«Considering that » • The preamble
«The Parties have agreed as follows» • Definition• Scope of the agreement• Rights and obligations of the
parties• Intellectual Property• Confidentiality • Publications• Warranty/Liability• Entry into
force/Duration/Termination• Applicable law/Jurisdiction
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
1. Definition of the project (the “Project”)
What are the Project objectives ?
How do you want the Project to be managed?
Do you need a board committee ?
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
2. Responsibilities and Resources of the Parties
Define the exact role of each party
Define the resources of each party (human, material, financial)
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
3. Establishment of the IP rules
Clarification of the pre-existing technology “Background IP” Identification of the Background IP Ownership of the Background IP remains unaffected
Ownership of the technical results generated in the course of the agreement and related to the project “Foreground IP” Ownership vested in the party having generated it Possibility of joint ownership
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
4. Confidentiality
If an NDA covers the discussion before entering into a collaboration, the confidentiality clause will cover all the confidential information exchanged during the Project.
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
III. Highlights on an R&D Collaborative Agreement
5. Publications
Very important in order to acknowledge the role of each party in the project but also to disseminate the results of the Project.
Conflict of interest between research institutions and industrial partner.
Standard clause : Right to publish scientific results obtained in the execution of the Project but with prior written approval of the other parties.
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
III. Highlights on an R&D Collaborative Agreement
6. Warranty/ Liability
Different type of warranties: timely performance, results, infringement of third party rights.
Liability of each party for actions or omissions under the R&D Collaborative Agreement.
CERN’s status as Intergovernmental Organization leaves no space for negotiation with regard to warranty and liability clause.
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
II. Highlights on an R&D Collaborative Agreement
7. General clauses
Duration and termination of the Project
Applicable law and Jurisdiction clauses
As an Intergovernmental organization, CERN enjoys immunity from jurisdiction. Obligation for the parties to resort to arbitration procedure in case of dispute.
Knowledge Transfer | Accelerating Innovation Charlyne Rabe
Bear in mind the contractual process to be followed for TT projects.
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