Byline Commercialization Agreement Made Easy

Initials transfer agreement

hello friends this video essentials of Technology Transfer agreement is brought to you by original solutions Bangalore a leading intellectual property and legal firm in India my name is Bindu Sharma and I request you to watch this video till the end like and share this video and subscribe to our YouTube channel so that you do not miss any further updates from us let's first understand what technology transfer is well technology transfer also called as transfer of technology or Tod is the process of transferring technology from a person or organization that owns our whole set to another person or organization technology may be developed by an individual inventor academic or research institution or industry and such technology may be transferred to the industry so that technology can be utilized brought to the market in order to generate revenue part of the revenue generated by industry is often shared with owner of the technology in the form of royalty when licensed to use the technologies given to the other entity by owner of the technology the technology is said to be out licensed whereas when licensed to use the technology is taken the technology is said to be in licensed there are three common modes of technology transfer for example license where transfer of rights is for a particular period of time assignment where transfer of technology is done permanently by assigning all rights and joint venture where buyer and seller both they come together to develop and sell the technology it's important to know what gets transferred in technology transfer deals well when a technology is transferred usually the process intellectual property like patents copyright design etc along with know-how and techniques get transferred broadly speaking the steps involved in transfer of Technology are as below first step is technology validation to make sure that technology actually is capable of working at pilot or industrial level before buying technology the buyer would like to assess value of the technology there are specific methods that help in valuation of technology after finding outright value of the technology it is easy to negotiate the terms and conditions of agreement and finally execution of agreement takes place to complete the process of technology transfer technology transfer agreement is executed between seller and buyer of the technology it is usually called as technology transfer agreement this agreement shall be carefully drafted so that relationship between the parties works well in the long run good agreement is the one which is favorable to both the parties before you sign any technology transfer agreement make sure that you check whether the agreement is exclusive or non-exclusive in nature exclusive agreement is the one where seller grants rights only to one party seller of the technology shall define the type of agreement right in the beginning please note that in case of exclusive agreement buyer has exclusive rights on technology and he can even prevent seller from using his own technology seller is owner of the technology and shall be careful about the rights it's going to grant to the buyer with respect to the technology such rights could be right to manufacture right to market right to sell or even import the technology in a given jurisdiction right to manufacture and sell the product in a specific territory or the country may also be specified in the agreement clearly as you know that in any agreement there are two parties and obligations of each party shall be clearly written and defined as a developer of the technology seller is usually thorough with each and every aspect of the technology and shall provide assistance to the buyer in order to execute the technology he may be required to impart training to the staff of buyer as well obligations of the buyer could be successful execution of the technology followed by putting best efforts to market and sell it further the buyer shall pay royalty to the inventor adds mutually agreed between both of them loyalty is one of the important clauses of a technology transfer agreement one can be as creative as he wants when it comes to the way royalty shall be paid part of it could be paid as down payment whereas rest of the amount can be paid as a percentage on profit sharing mode of payment like payment by cheque or demand draft or via transaction shall also be mentioned in the agreement clearly like any other relationship in technology transfer also it's important to have transparency in terms of how the buyer is utilizing the technology as well as revenue being generated due to implementation and usage of technology it's better to have a clause in the agreement that gives right to the seller of technology to audit the accounts of buyer prodigally so that there is transparency between both the parties if any dispute arises between the parties in due course of time there must be a process to sort this out by a mutual discussion however there may be option to resolve dispute by arbitration it is open to the parties to select procedure and venue of arbitration if the venue is not in India but say in Paris or London the Indian entity must consider the high cost of arbitration and examine the enforceability of awards in that particular country governing law Clause is used in legal agreements where you can declare which rules and laws will govern the agreement if any legal issue arises in future it is therefore sensible to state in a contract which set of laws will govern it governing law Clause usually reads as this agreement is governed by and shall be construed in accordance with laws of India when buyer starts using the technology in due course of time some improvements might come up now the question arises who owns such improvements by it or seller or both of them might agree to jointly own such IP on the improvements however such ownership of IP shall clearly be written in the agreement Indemnity is a very critical clause in any agreement it is recommended to read and understand this clause carefully indemnity clause typically protects both parties if you are seller of the technology you might agree to compensate the buyer for any losses from third party intellectual property infringement claims that might result from use of the technology if your buyer of the technology you might agree to compensate the seller for the damages in the event you breach confidentiality or misuse the product or the technology confidentiality is of utmost importance in any technology transfer agreement and particularly in the cases where unpatented know-how is involved breach of confidentiality can occur either during the early stage of negotiation or during the duration of the agreement the breach could also occur after expiry of the agreement therefore confidentiality provisions they usually survive termination of the agreement transfer of intellectual property and know-how is extremely critical in technology transfer agreements IP involved in the transaction could be in the form of patent copyright trademark design confidential information and even trade secret and such intellectual property may be either registered or unregistered know-how means practical knowledge skill or expertise and it has to be clearly written in the agreement with the extent such know-how would be transferred and how would confidentiality of it will be maintained every equipment has specific term like five years or seven years however continued use of technology by the buyer may be a matter of concern post agreement termination the seller may insist that know-how in the form of documents equipments reverts back to the seller upon termination of the agreement and that the buyer is not permitted to use the know-how and other things related to the technology the termination normally does not liberate the buyer from its obligations regarding confidentiality or payment of royalty buyer may be permitted to manufacture the product beyond life of the agreement in this video we discussed important clauses of technology transfer agreement technology transfer is an exciting time for both buyer and seller of the technology since it is long-term relationship having good agreement is important thank you for watching this video for any queries related to intellectual property and legal services you can contact us email ID and phone number have been provided in the video description thank you have a good day