Technology Transfer Legal and Transactional Issues 5.5.2015

Technology Transfer TransactionsThe commercial & entrepreneurial exploitation of Research

Legal Issues, Procedures, Tools

Technology Transfer Transactions (tools, procedures, legal issues)by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value (www.add2value.com

http://www.add2value.com/

Defining the required Technology Transfer TransactionsCommercialization Strategy

Business Strategy vs Commercialization Strategy:

The particularities of the path from Research to Market

What is the role of the “Market” in Technology Transfer;Is it the Market that set the Research Challenges or does Research open up new “Markets”? (market or technology trends?)-Academic Target: Peer recognition-Applied research target: Introduction of new technology with potential diffusion of use-Commercialization target: Getting into customers

Technology Transfer Transactions (tools, procedures, legal issues)by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

The essential elements of the Commercialization StrategyFrom research result to product

•User and Beneficiaries: Converting a research result to a product•Market Value: Economic value as a main driver•Market competition: Immediate, potential and “hidden” competition•Customers: (a) Firms as customers, (b) Collaborating with firms for the entry to new customer markets


Technology Transfer Transactions IContracts of collaboration between firms and researchers

•Potential Forms of Collaboration-Joint research – collaborative products-Research mandates-Consulting contracts-Production support-Market support-Framework contracts

•Balancing the roles among firms and researchers – Particularities of each type of contract


Technology Transfer Transactions IILicensing Intellectual Property Rights– Exploitation of IPR

•Intellectual Property Rights-The wide spectrum: Patents, Copyright, Designs, Trade secrets-know how, Plant varieties etcThe IPR owner – the professor’s privilege

•Exploitation of Property Rights: •What does exploitation mean? What are the limitations set to the researcher? What are the opportunities?

•Licencing of IPRValuation of IPR – The time factorMain terms


Role of University in Technology Transfer TransactionSpecific conditions and restrictions

•Contracts concluded by Researcher or University;-Potential alternatives-The consequences of the «professor’s privilege» (Who is the IPR owner?)•Contracts by the Researchers-Defining the subject -matter-Main terms•Contracts by the University-Defining the subject - matter-Terms and conditions: Restrictions for selection of collaboration partner; Application of public procurement rules?


Technology Transfer Entities – Vehicles ICreating a spin off with participation of University

Main challenges•Activity•Share Capital and Funding•Administration

•The University as shareholder•Valuation of shareholding -- Shareholder rights

•Legal framework•Participation of professors in the administration•Tax, Accounting and legal framework


Technology Transfer Entities - Vehicles IISetting up a Start Up by Researchers

•Potential Company Structure•Participation of researchers and third parties•Provisional researcher-only shareholding

•Collaboration with University•Valuation and Valorisation of fee paid to University

•Main challenges•Researcher as Entrepreneur•Management Team•Legal Framework Restrictions•**Balancing within the University ecosystem


Technology Transfer Entities - Vehicles IIIJoint Ventures with firms - Common company

•Alternative Joint Venture Structures•Main Issues•Participation of researchers and firm - Shareholder Participation of University•Bonds and shareholding by firm•Valuation •Researcher as Entrepreneur•Management Team•Legal Framework Restrictions

•Main challenges•The next steps – Lifecycle of project•**Balancing within the University ecosystem


Financing Technology Transfer TransactionsWhat defines the options?

•Financing a venture of research commercializationResearch programs and State SupportInvestors Smart money by firms as investors + collaboratorsLending•Financing a new Entity•Investors: Venture Capitals, Angel Investors, Smart MoneyEU ProgramsLending


Contracts as technology transfer transactions toolDrafting contracts

•Different Legal Systems: The anglo-saxon legal system vs Continental Europe system•Balancing interests -Commitments – Value - ExpectationsThe architecture of Rights and ObligationsMain obligations and commitmentsBreach of obligationsTermination of contracts•Terminology and Content accuracyImportant elements for contractual terms draftingAnnexes and Definitions -A complex Set of AgreementsMOUs, Letters of Intent, Multiple contracts


Facing the legal issues in Technology TransferSignificant Challenges

1. Understanding of Institutional Framework

2.Commercial strategy and the law

3.Organization and Support – Advisors

4.The right mix between Flexibility and Protection


Technology Transfer Legal and Transactional Issues 5.5.2015

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