tips for a competitive technology transfer strategy when ......transfer strategy when going...

Tips for a competitive Technology Transfer strategy when going international: The Role of IP

With IP Experts Thomas Pattloch (China), Eli Salis (LA) and Karl Rackette (SEA)

Moderator: Valentina Salmoiraghi31 January 2018

Copyright © 2018 International IPR SME Helpdesks. All rights reserved.

Moderator

Name: Valentina SalmoiraghiPosition: IP Business Advisor at South-East Asia IPR SME Helpdesk Location: VietnamEmail: [email protected]

Valentina has over 13 years working experience in Asia providing legal assistance with reference toCommercial and Corporate matters, Contracts and Negotiations, Inbound and Outbound Investments,Intellectual Property Rights (registrations, licensing and enforcement), Due Diligence, Commercial andIP Arbitration and Litigation, Mergers and Acquisitions deals and restructuring with reference to thejurisdictions of Singapore, Malaysia, Vietnam, Indonesia, Thailand and China.

She provides advice to companies in various industry including ICT, consumer goods, manufacturing,fashion and design, food and beverage, medical, education, automotive and equipment. Her IPexpertise areas mainly include trade marks, designs and copyright.

Valentina holds a Master Degree in Law - International Institutions - from Bocconi University, Milan(Italy), and a Master Degree in Law from University of Barcelona and she is also called to the Bar in Italyand Spain. After working for a leading international Law Firm in Milan, she started her working practicein 2007 in Beijing mainly advising European companies on IP matters and Foreign Direct Investments.She joined the China IPR SME Helpdesk as IP Expert in August 2013 and she has been co-operating withthe South-East Asia IPR SME Helpdesk since year 2014 (Phase I and Phase II).


Today’s Speaker - China HD

Name: Thomas PattlochFirm: Taylor WessingLocation: MunichEmail: [email protected]

Thomas Pattloch as practitioner specialises in industrial property rights and technology transfer witha particular focus on China. He provides comprehensive assistance and advice with regard to allaspects of Chinese industrial property law, covering inter alia strategic establishment of industrialand intellectual property rights in China, enforcement of rights and assisting clients in particularlysensitive fields of technology, competition-related aspects of license agreements, drafting ofsoftware and technology license agreements, designing R&D projects as well as IP transactions. Hisremit also comprises assistance in fighting product piracy in China and Asia. Thomas went to lawschool in Munich.Afterwards, he did his doctorate at the University of Passau, with a thesis on Chinese IP rights, andwas a research assistant with the Asia department of the Max Planck Institute for Foreign andInternational Patent, Copyright and Competition Law. After obtaining his doctorate degree, hepractised law in Shanghai. Before joining Taylor Wessing he was the European Commission's IPOfficer in Beijing, China.


Today’s Speaker - Latin America HD

Name: Eli Salis Firm: Disain IP Location: Alicante, SpainEmail: [email protected]

Mr. Eli Salis is Partner attorney at Disain IP (Alicante, Spain) and focuses on Intellectual Property,in particular, with the protection, prosecution and enforcement regarding trade marks, patents,designs and copyrights. He has s graduated from the National University of Litoral, Santa Fe(Argentina) and has a Master Degree on IP from the University of Alicante. He representsinternational and medium sized companies in proceedings before National Offices of Patents andTrade marks. He also has extensive experience in managing and coordinating the prosecution andenforcement of IP matters across the Europe and Latin America regions.

Eli is author of several publications on IP matters and lectures at different Universities in Europeand Latin America. He also provides consulting services to the World Intellectual PropertyOrganization (WIPO).


mailto:[email protected]

Today’s Speaker – South-East Asia HD

Name: Karl Rackette Firm: RACKETTE Patentanwälte PartG mbBLocation: Freiburg, GermanyEmail: [email protected]

Karl Rackette is the senior partner of the RACKETTE Patentanwälte PartG mbB in Freiburg,Germany. He is involved in IPR matters as a professional representative before the German Patentand Trademark Office, the European Patent Office, the European Union Intellectual PropertyOffice, WIPO as well as German Courts, including the Supreme Court in patent nullityproceedings.

Karl obtained a Master of Intellectual Property Law and Management from the University ofStrasbourg. He undertook training to become a trademark and patent attorney in 1976 afterpreparing a thesis in the field of electronics and obtaining a Master in physics from the RWTH inAachen, Germany.

Dr. Rackette has been invited to speak on numerous occasions by the EPO, WIPO and otherorganizations. Since 1992 he has been teaching at the Center for International IntellectualProperty Studies (CEIPI) in Strasbourg, France and since 1997 he has been a tutor for the SouthEast Asian Patent Drafting Course organized by FICPI in Asia.


6

Agenda

• What is Technology Transfer and How it relates to IPR?

• Main IPR issues before ‘the deal’ related to Technology Transfer (Intro to the topic by China HD Expert)

• Region specific info China

• Region specific info LA

• Region specific info SEA

• Main contractual issues (Intro to the topic by LA HD Expert)




• How to prevent infringement and engage with local partners (Intro to the topic by SEA HD Expert)




• Q&A Session


What is Technology Transfer and How it relates to IPR?

• EU SMEs willing to ‘transfer’ some of their technologies to local subsidiaries ofEuropean firms, or joint-venture partners, or local manufacturing and servicecompanies

• Technology Transfer can be considered in a broader sense:

- Not only and strictly production technology (not only high-tech sector)

- Management expertise and know-how

- Marketing skills and general intangible corporate assets

• IP is a key factor in the competitiveness of businesses in the global economy: Not only away to help protect innovations and new products from competitors, IP assets can alsobe an important source of cash-flow through licensing deals or selling IP, as well as asignificant pull-factor when attracting investors

• Minimise the risk of IP loss associated with technology transfer: inadvertent leakage ofIP, or in breach of agreements or law


Main IPR issues Before ‘the deal’ related to Technology Transfer

• (Intro to the topic by China HD Expert)

• Specific issues for technology transfer

– The rights strategy for the “transfer” – market, partner, growth and profitability

– Intellectual property rights and its increasing value

– Know before you go

– Choosing your partner & Due diligence

– NDA/ MOU and licensing


Main IPR issues Before ‘the deal’ related to Technology Transfer: China


– NDA/MoU

– Contract law and licensing

– Patenting and ownership of rights

– Assignment of patents

– Assignment of know-how

– Trade secret protection

– Burden of proof

– Critical contract clauses

– Prepare for the worst, reap the benefits if all goes well


Main IPR issues Before ‘the deal’ related to Technology Transfer: Latin America

• Protection of patents, designs and trademarks in LA countries: international agreements (PCT, Madrid Protocol, Hague Agreement)

• Facts to take into account before the negotiation with a third party in Latin America:

– define the subject matter of the agreement

– Team work

– Due diligence. Need to use private databases in order to conduct searches (most of the National Patent Offices have limited access to their own databases)

– Freedom to operate

– Confidentially agreements (NDA)


Main IPR issues before ‘the deal’ related to Technology Transfer: South-East Asia

• Think globally, file IPRs locally using WIPO

– Patents, Trade marks, Designs



Think globally, file for IPRs locally using WIPO / EPO

– PCT, (EPO Validation), Madrid and the Hague Systems

PCTMadrid

- - -

PCTMadridHague

PCT (EP)MadridHague

PCTMadrid

PCTMadrid PCT

Madrid

PCTMadridHague

PCTMadrid

PCT


Main Contractual Issues

• (Intro to the topic by LA HD Expert)

• Common forms of IP Commercialization:

– Assignments

– Licensing

– Joint Venture

• Definition of License Agreements

• License benefits and risks for licensor and licensee


Identification of the Parties

One of the main points of concern to the negotiators of the license contractwill be the identification of the entities or persons which or who will becomethe parties or, in other words, will sign the license contract and becomelegally bound to carry out its provisions.

the conclusion of the license contract may be a grouping of legalentities, all organized


Scope of the License

• The ultimate objective of the parties in concluding a license contract is thetransfer by the licensor, and the acquisition by the licensee, of a giventechnology and of the right to exploit that technology in the making, orin the use or sale of a given product or in the application of a givenprocess through which a product or other result will be obtained

• Type of license: Exclusive or Non Exclusive


Scope of the License: Common Problems


• European Company has not seek for protection of their IP Rights in Latin America countries. Which is the legal implications?

• European Company knows that he has patent protection in some countries but he is not able to identify them. Which are the steps this company has to take?

• European company signed a license agreement over a know how with a Latin America company. This company disclosed without authorization some data. What does the European company should do?

Compensation

• How will the licensee make the payment? Upfront license fee or Royalties on sales?

• How will royalties be calculated?

• When are payments due?

• What is the currency of the payment?


Other aspects to take into account …

• Obligation to maintain the IP Rights

• Warranties by the Licensor

• Indemnities

• Performance obligations

• Sub-licensing

• Right to institute infringement proceedings

• Duration and termination

• Dispute resolution


Main Contractual Issues: Tips on Latin America Countries

• Many LA countries request that the licenses must be in writing andregistered before the Patent Office in order to have effect against 3rd

parties (Colombia, Brazil, Chile, Mexico, Peru)

• In other countries an approval by the Patent Office is mandatory in orderto authorize the remittance of royalties to foreign licensors (Brazil) o tohave tax deductions (Brazil, Argentina, Chile)


Main Contractual Issues: South-East Asia

• Clarifying ownership of intellectual property

– Creator(s), inventor(s), employer(s) …

• Filing and prosecuting an application

– Applicant(s), costs, instructions, decisions

• Assigning

• Licensing (scope, territory, type, royalties…)

• Defending and enforcing the IPR

• Marketing, pricing, accounting, tax payments …

• Preparing a written agreement using local legal advice (with translation into the local language)


Main Contractual Issues: China

– Long contracts / short contracts

– Language, definitions, annexes

– Improvements

– Confidentiality

– Reverse engineering

– Audits

– Choice of court and jurisdiction vs arbitration


How to prevent Infringement and engage with Local Partners

(Intro to the topic by SEA HD Expert)

Business Plan / Export plan for entry into new market

– direct exporting, joint venture, licensing

– identifying markets, estimating demand

– finding local partners

• Participating in trade shows, fairs, exhibitions

• Exploiting IPR databases (Patentscope, Espacenet, …)

– negotiating contractual agreements

– advertising / marketing products in export markets

– convincing investors, venture capitalists, banks

– considering IPR issues, pricing, competition



Checking IP rights in foreign markets

– principle of territoriality

• a local patent can be a problem even if you are the owner of a patent in your home country or in a third country

• a local patent can exist even if there is no protection in your own country or a third country

• even owning a local patent is not an entitlement for its use

– a patent owner needs to respect older patents

– a patent owner only may exclude others from use

Use patent databases to check for IPRs

Failure to consider IP issues may result in fatal losses if your products are considered to be infringing upon the IP right of others



Coping with imitations by competitors

– mark your products with e.g. patent number

– observe the market including publications

• patent filings of competitors

• contact yourself

• via distributors

• by clients

– watch trademark and imitators early to seek an amicable solution via an agreement, including licensing


How to prevent Infringement and engage with Local Partners: Tips for South-East Asia

Consider legal action if an amicable solution seems to be out of reach

– contact a local attorney

• preparing a cease and desist letter

• private mediation via legal professionals

• consider arbitration e.g. Singapore (WIPO dispute resolution office)

– take legal action

• administrative proceedings

• conducting raids

• criminal prosecution

• civil litigation

• using customs to block counterfeits


How to prevent Infringement and engage with Local Partners: Tips for South-East Asia

Myanmar

• Draft bills on trademark, copyright, patents and industrial designs were forwarded to the concerned legislative committee for deliberation on 24 July 2017

– uncertain when bills will enter into force

– as “least-developed country” Myanmar has until 2021 to fulfill its obligations under the TRIPS Agreement

• There is an established practice in Myanmar of registering a Declaration of Ownership of a trademark

– once accepted it can be used as a prima facie evidence of the ownership of a mark (allowing to seek remedies from Myanmar courts)


How to prevent infringement and engage with local partner: Tips for China

– Filing strategy for IP rights

– Licensing contracts and contractual obligations

– Control over staff, control over business partners

– Employment contracts

– Trade secret protection: technological, physical and contractual

– Contractual penalties

– Enforcement – contract or tort?


How to prevent infringement and engage with local partner: Tips for Latin America

• How to choose the right partner in Latin America?

• How can I reduce the risks of my rights being infringed?

• Importance of IP Monitoring

• Know your different rights in each country and the tools to combat infringement


Free Information and Materials Available

Library of publications:

IP specific guides, incl. patents, trade marks

Industry specific guides, incl. textiles, machinery,

creative industries

Business guides, incl. technology transfer

Country Factsheets, incl. Brazil, Mexico, Colombia,

Peru, China, Hong Kong, Macao, Taiwan and more

Helpdesk Newsletters

Article placement

Topical blog posts

E-learning modules

Infographics


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