IP MANAGEMENT AND TRANSFER OF TECHNOLOGIES License and assignment Both are made through legal (registered in the concerned

IP office) agreements. Assignment means transfer of ownership rights over the property to the assignee by an agreement to that effect. On the other hand, license merely authorizes a party to use the technology commercially without transferring the ownership. For example, when a plant breeder assigns his registered variety to a seed company, the latter will be the new proprietor and the former will forego all rights over the variety. On the other hand, if the breeder gives it on license for production and marketing of seeds of the variety in e.g. Assam for certain period, the licensee will commercialize the variety 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 is a license granted by the government in certain emergent situations to third parties without permission of the IP owner when the requirements of the public are not fulfilled by the owner of IP. In case of compulsory license, the owner can claim royalty. CL provisions 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. In patent 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

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. Copyright 2. Trademark 3. Design 4. Patent 5. Plant variety right 6. Integrated circuit design 7. Trade secret Which IPR is not licensable or assignable? Geographical indication. GI protected goods can be, however, transferred by trade agreement between parties without compromising the product quality and GI tag. Also, biological resources and traditional knowledge are not transferrable by assignment or licensing. Biological resources are transferrable through Material Transfer Agreement (MTA). Four ways for technology transfer: 1. By assignment 2. By licensing 3. By operation of common law 4. 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 all the owners. IP management and technology transfer: Let us now turn to the ways of management of IPR portfolio (bundle of IPRs possessed by an individual or institute) and transfer of protected technologies 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 the producers/ manufacturers for commercial exploitation. In agriculture we are familiar with release of varieties or other technologies to the farmers, which is in fact technology transfer.
PGS 503: IP management: Transfer of technology - Dr. P. K. Barua Page 2

IPR is intangible asset - can be simultaneously used by many users, unlike the tangible assets which can be used by only one party at a time. For effective technology transfer the following points are very important. (i) Capacity building for IPR management, information and documentation, 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. a plant variety): (1)Do not go for registration and freely transfer the technology to the users. (2)Protect (register) the technology, and give it free to the users with or without condition. (3)Protect the technology first and then transfer on license for commercialization. IPR protection is optional, without registration also an institute can transfer the technology. It is up to the policy of the institution. For instance, ICAR has made a policy to protect all technologies generated under ICAR system and then transfer the technologies on case to case basis depending on the situation. Similarly, AAU has also developed policy guidelines for IP management 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?

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

Page 3