ip management pgs503

7/28/2019 IP Management PGS503

1/3

IP MANAGEMENT AND TRANSFER OF TECHNOLOGIES

License and assignmentBoth are made through legal (registered in the concerned IP office)agreements.

Assignment means transfer of ownership rights over the property to theassignee by an agreement to that effect. On the other hand, license merelyauthorizes a party to use the technology commercially without transferringthe ownership. For example, when a plant breeder assigns his registeredvariety to a seed company, the latter will be the new proprietor and theformer will forego all rights over the variety. On the other hand, if thebreeder gives it on license for production and marketing of seeds of thevariety in e.g. Assam for certain period, the licensee will commercialize thevariety to that extent only.Both are applicable to patent, plant breeders right, trademark, design,copyright, integrated circuit design, and trade secret (but not GI).License is a legal agreement between IP owner (licensor) and the buyer

(licensee) whereby the licensor grants permission for using his/her IP

(technology) in mutually agreed terms defining the purpose, territory and

the period of time. Licensing is the most effective for creating value and transfer

of technology.

Exclusive license and non-exclusive license:

In exclusive licensing, the technology is transferred to one party only giving monopoly right

over the use of the technology for commercialization. In non-exclusive licensing, more than one

party are authorized to commercialize the technology with certain terms and conditions.

Voluntary license and compulsory license:

The owner of IPR protected technology transfers technologies by voluntary license by which the

IP owner can negotiate for monetary benefits like license fee, royalty etc. Compulsory license isa license granted by the government in certain emergent situations to thirdparties without permission of the IP owner when the requirements of the public arenot fulfilled by the owner of IP. In case of compulsory license, the owner can claim royalty. CLprovisions are provided in the Patent Act 1970 and the PPV&FR Act 2001.

Inlicensing and Crosslicensing:

Inlicensing is a partnership that develops between two companies that have shared intentions,

goals or fields of interest. In the case of drug companies, these goals can be the research and

development of a product, or perhaps its distribution. Inlicensing is so popular because it allows

the expertise of each company to be used in a manner that is mutually beneficial by profit

sharing.

If Pfizer (a multi-national company), for example, needed help developing a new cancer drug, it

may turn to a smaller, lesser-known research firm and ask what they can help with. If the other

firm believes that it can derive some benefit, the two may enter into an inlicensing agreement.

Pfizer may help by providing facilities, experts, materials and money. The other company will

help by providing some capital of its own, as well as the researchers.

Crosslicensing: It is a license that is granted by IP holder to a competitor who reciprocates with

a similar license. Inpatent law, a cross-licensing is an agreement according to which two or

PGS 503: IP management: Transfer of technology - Dr. P. K. Barua Page 1


2/3

more parties grant a license to each other for the exploitation of the patented technology claimed

by each party. Cross licensing generally implies that neither party pays royalties to the other.

For example, Microsoft and JVC entered into a cross license agreement in January 2008, thereby

each party can practice the inventions of the other party covered in the license agreement.

Material transfer agreement (MTA)It is an agreement between two parties for transfer of IP related materials. As a case, we can

look at the MTA that is to be agreed to and signed by anybody who wants to bring plant genetic

materials from NBPGR (National Bureau of Plant Genetic Resources) New Delhi for research

purpose. Now-a-days all organizations transfer materials only through MTA.

Licensable / assignable IPR:1. Copyright2. Trademark3. Design4. Patent5. Plant variety right6. Integrated circuit design7. Trade secret

Which IPR is not licensable or assignable?Geographical indication. GI protected goods can be, however, transferred bytrade agreement between parties without compromising the product qualityand GI tag.Also, biological resources and traditional knowledge are not transferrable byassignment or licensing. Biological resources are transferrable through

Material Transfer Agreement (MTA).

Four ways for technology transfer:1. By assignment2. By licensing3. By operation of common law4. By placing the technology in public domain (for free use, as varieties

are released now by SAU, e.g.)

If there is joint ownership of the IPR, it is to be transferred by consent of allthe owners.

IP management and technology transfer:Let us now turn to the ways of management of IPR portfolio (bundle of IPRspossessed by an individual or institute) and transfer of protectedtechnologies to the users. For examples, patented invention (technology),plant breeders right protected (registered) varieties, copyrighted books,computer software, art forms, registered trademarks, registered designs,trade secret, etc. Suppose you want to transfer your technologies to theproducers/ manufacturers for commercial exploitation. In agriculture we arefamiliar with release of varieties or other technologies to the farmers, whichis in fact technology transfer.



3/3

IPR is intangible asset - can be simultaneously used by many users, unlikethe tangible assets which can be used by only one party at a time. Foreffective technology transfer the following points are very important.

(i) Capacity building for IPR management, information anddocumentation, patent search and analysis, patent drafting,licensing, valuation of IP, negotiating licensing deals.

(ii) IPR awareness.(iii) IPR policy of the concerned country, state, organization,

university or company etc.

The owner of technology has three options for transfer of technology (e.g. aplant variety):

(1)Do not go for registration and freely transfer the technology to theusers.

(2)Protect (register) the technology, and give it free to the users with orwithout condition.

(3)Protect the technology first and then transfer on license forcommercialization.

IPR protection is optional, without registration also an institute can transferthe technology. It is up to the policy of the institution. For instance, ICAR hasmade a policy to protect all technologies generated under ICAR system andthen transfer the technologies on case to case basis depending on thesituation. Similarly, AAU has also developed policy guidelines for IPmanagement and technology transfer.

Review questions:1. Differentiate between

(a) License and assignment(b) Exclusive license and non-exclusive license(c) In-licensing and cross-licensing

2. What is MTA?3. What are the options for technology transfer for an institute like AAU?


ip management pgs503

Documents