cern.ch/knowledgetransfer. knowledge transfer | accelerating innovation charlyne rabe contracts for...

cern.ch/knowledgetransfer

Knowledge Transfer | Accelerating Innovation Charlyne Rabe

CONTRACTS

FOR TECHNOLOGY TRANSFER

Charlyne RABEKT Legal Advisor


• 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.


I. Overview of TT contracts

II. Highlights on a collaboration agreement



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


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)


Collaborative R&D Project

NDA




Licence Agreement

License Agreement

License Agreement



NDA


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




NDA




Definition

IP Sharing

Joint IP protection conditions

Joint IP exploitation conditions

NDA






NDA




License Agreement


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


Collaborative R&D Project With a public external funding

(Ex : EU Project)


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


II. Highlights on Collaboration Agreement

LOGO


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



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 ?



2. Responsibilities and Resources of the Parties

Define the exact role of each party

Define the resources of each party (human, material, financial)



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



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.


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.


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.



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.


Conclusion


Bear in mind the contractual process to be followed for TT projects.

We are here to help !


Thank you

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