We at Singhwal have a team of Contract law experts from various fields of technology who have a vast experience of drafting various agreements required during a business transaction. Our team of Attorneys who are specialized in Intellectual Property Law and have dealt in various verticals of contracts starting from drafting, vetting, reviewing as well as negotiating all sort of IP agreements which are involved in a business. We also work on other agreements which has elements of Intellectual Property but not entirely dedicated to the same.
Technology transfer is a process which involves the transfer of technology, expertise, know-how or system developed by one individual, company or organizations handed over or moved to another organization or individual. It is the main process that helps in the development of discoveries and research into products or practical applications.
The main objective of technology transfer is commercialization of developed technology, know-how, new product or service or in the improvement of an existing product or process. The transfer would be simple or complex depending on the technology which is to be transferred. Technology transfer may occur between one country to another country or from one industry to another industry, or from one research laboratory to an existing one or a newly developing one or new invention.
The technology transfer involves a high level of skill in how the technology will be transferred, what are the major legal contracts involved and what type of agreement is entered into by the two parties involved in the technology transfer. All these stages demand a lot of skill and understanding both on the technical front as well as legal front. One may wonder why such a process is required.
The answer to this is to improve or maintain competitive position of business in the market place where competition is on the basis of price alone, so improving efficiency becomes highly important which is possible by improving or acquiring new machinery and equipment. For Small and Medium-sized Enterprises (SMEs) investing in technology development is highly expensive and risky, as the innovation process involves many highs and lows so they prefer to transfer technology rather than developing it in-house.
Technology transfer is the process that takes place between the owner of the technology that is in question, and the buyer of the rights to use this technology, through some standard legal procedures. The owner is known as the ‘transferor’ and the buyer is the ‘transferee’ and the technology transfer process does not only include the purchase of the technology, but may include the right to use it, the purchase of the licenses of the patents and other protection as well.
There is an immense involvement of skill before we reach to the position to get into any technology transfer agreement. It demands a lot of negotiation and various factors are needed to be taken care of, like what level the technology is to be developed, the actual requirement of the buyer or the ‘transferee’ and their capability in terms of technology, the efficiency of the technology in terms of cost and the importance of it, the support provided during and after transfer for adapting the new technology, whether long term or short term relationship between parties, issues like liability, indemnity, warranty etc. Since the process of technology transfer is a legal process, it means that both the parties involved enter into a relationship that is based on mutual agreements, by agreeing on terms and conditions through which technology transfer would occur.
We at Singhwal, have attorneys who are trained and educated in multiple jurisdictions, thereby offering the best services while drafting agreements.
The level of negotiations involved also depends on the parties involved. If the technology is developed by a student of the University, and the party interested in commercializing this technology is a key Industry player, it leaves less room for negotiations. However, still certain aspects of the agreement may be negotiated upon. However, when a smaller company with pure commercial interests has another entity interested in an Intellectual property developed by them, then in that instance, there are more opportunities for negotiations. We work closely with our clients to understand their interests and best represent them in the negotiations and draft the terms of the agreement accordingly.
These various methods and legal arrangements overview is explained below:
The Sale or Assignment of IP Rights.
It is a type of transfer in which the owner of the IP rights transfers all his exclusive rights without any limitation to the purchaser and is called as an “assignment” of such rights taken place. Assignment of patents and Trademarks are also required as a part of the regular patent or trademark prosecution with the Indian patent office, in the event the patents and/or trademarks is to be transferred to an entirely new entity or individual due to a sale. It may also be required when the Application was initially filed under the name of the Applicant and then eventually has to be transferred into the name of the company or entity.
The contract that is entered into, known as the ‘Know-How’ contract can be in either an intangible form or also in a tangible form. The tangible form of transfer is through photograph, illustrations, manuals, diagrams, process flow charts etc. and the intangible form of transfer includes training or explanation from the know-how transferor to transferee. Such provisions could be included in a license agreement. Know how contracts are sometimes also inclusive along with the Patent or patents. In the event of commercialization, the party involved in the commercialization of particular technology would in certain instances not only want a particular patent assigned to them, but also the associated know how and in certain cases, also include the inventor as a consultant for a period which may be mutually agreed.
A consultant agreements or contract is between the consultant and the client, forming an arrangement by which the client buys the services of the consultant. In such a business arrangement not only the technology is acquired but experience is also gained by learning, working and engaging with the consultant. When the question in Intelelctual property with respect to consultancy agreements, it mostly remains with the company that is engaging the consultant to work for them. However, in the event the consultant is a member of a University, and the work overlaps on his/her own research, it becomes tricky to handle the Intellectual property clauses. IN these circumstances the Intellectual Property is narrowly defined and is attributed to the company. It is for overcoming this problem that even with Joint venture agreements also, the background Intellectual Property and the Foreground Intellectual property is clearly delineated. This brings much clarity to the aspect of whom the Intellectual property vests with.
Confidentiality clauses are also to be strictly negotiated and drafted with respect to the agreements where the subject matter constitutes one or the other kind of Intellectual property.
In a franchise model or distributorship model the commercialization of IP is generally done by investment in one party and transferring his reputation, know how, expertise by another. It general involves trademark or service mark or a trade name or trade dress. The backbone of a franchising is also Intellectual property Licensing. The entire bundle of rights constituting the Intellectual property is transferred as far as franchising is concerned.
Joint Venture Agreements.
A joint venture agreement is an arrangement between two entities which could be contractual joint venture or equity joint venture. The equity type results into a separate legal entity and the contractual is based on the terms and condition agreed upon. The prime motive of the arrangement is commercial transfer and acquisition of technology. Most commonly Universities collaborate with Industry in the form of Joint Venture agreements to be able to commercialize their Intellectual property. These agreements have to clearly spell out as to how the Joint Intellectual property developed is owned. And as to how the it will be prosecuted in the future. It will also include details of who maintenance of such Intellectual Property and commercialization aspects of the same.
License or License Contract.
License is the arrangement for commercialization of IP rights by rendering permission to the licensee to a patented invention or any IP right which covers the “acts” like the making or using of a product or using a patented process to make a product. The license is rendered subject to certain conditions, which will be mentioned in the agreement to license. IP licensing is an important aspect of commercializing different types of intellectual property. However, the IP licensing agreements particularly patent licensing agreements becomes tricky to draft considering all aspects involved in the deal. We not only assist in drafting, we also assist in the negotiations as well. Thereby giving all rounded services as far as Agreements or contracts are concerned.
Acquisition of Equipment and their Capital Goods.
By sale and purchase of equipment and other capital goods can lead to commercial transfer and acquisition of technology.
As far as technology-intensive agreements are concerned, a simple example is a service level agreement which involved software as its subject matter. Wherein a web application has to be developed and business owner is engaging a consultant or a company for developing such an Application, the nitty gritty of the technical details involved has to also be involved in the agreement, which also form an important part of negotiations as well.
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Non Disclosure agreements can be a requirement with any business. However, with respect to Intellectual property, it bears significance. Since even while discussing the idea with a potential business partner or any third party for any reasons. It is prudent to have the said discussion and exchange of materials with respect to the said Intellectual property bound by a Non disclosure Agreement. We help our clients draft the Non disclosure agreements as per their requirements dependent on the situation.
We also offer others services with respect to Agreements in the form of basic employment agreements and other basic agreements and contracts that are required by Start ups and small businesses and offer a one stop solution for such clients who are keen on protecting their Intellectual property but would also like the other concerns and agreements drafted which form a part of regular business transactions. Having an in-depth understanding of our client’s businesses helps us bring out the pain points in the agreements with ease.
We at Singhwal, primarily determine the scope of the agreement or contract a client is interested in. In order to determine the same, we understand your requirements come up with relevant questions and depending on the clients answers finalise the scope of the agreement and then embark on drafting the Agreement or contract.
We at Singhwal cater to all type of IP commercialization agreements and contracts. Our attorneys having a technical background gives us an edge on others to understand, co-relate law and technology for drafting various agreements.