technology Transfer, Legal Framework a conference given by Thibault Verbiest, associated partner Ulys, Attorney at law, admitted to Paris and Brussels bars Professor at La Sorbonne University for Go4Europe in Tel Aviv on 10/31/2011 What's technology tranfer (TOT) Transfer of new technologies from universities and research institutions to parties capable of commercialization, or in the sense of transfer of technologies across international borders, generally from developed to developing countries.  Each year Israeli technology transfer companies generate a total of over NIS 1 Billion in royalties.  Over NIS 100 Million are invested by industrial companies in scientific research collaborations at universities  About 150 new technologies are licensed from Israeli universities and research institutes each year Success Keys? Israel invests 4,7% of its GDP in R&D, the highest ratio of any country in the world Profits driven Israeli Innovations include a long list of markets firsts such as disk-on-key technology, IP telephony, ZIP compression, the ingestible pill-size camera, ICQ instant messenger see the whole presentation on LinkedIn (ulys law firm) http://w1p.fr/42324, follow the group TMT Legal Experts on Linkedin or go to http://www.ulys.net

2.  Transfer of new technologies from universities and research
institutions to parties capable of commercialization, or in the
sense of transfer of technologies across international borders,
generally from developed to developing countries.
 Each year Israeli technology transfer companies generate a
total of over NIS 1 Billion in royalties.
 Over NIS 100 Million are invested by industrial companies in
scientific research collaborations at universities
 About 150 new technologies are licensed from Israeli
universities and research institutes each year

3.  Entering into technology transfer agreements
 Setting up joint ventures and partnerships to share both the risks
and rewards of bringing new technologies to market
 Other corporate vehicles such as spin-outs. In such cases, the
parent company usually offers support to the “spin out” company
doing one or more of the following:
 investing equity in the new firm,
 being the first customer of the spin-out (helps to create cash
flow),
 providing incubation space (desk, chairs, phones, internet
access, etc.),
 providing services such as legal, finance, technology, etc…

4.  Employee poaching
One of the methods used in the technology transfer industry to capture the expertise of competition is
to poach executives and technology specialists. This is one of the activities of headhunters,
recruitment firms.
 Industrial espionage
It implies corporate spying with professional criminals targeting specific technology, initiating network
attacks (hacks), laptop computer thefts accessing source code, product designs, marketing plans,
customer lists, approaching employees to reveal company information, etc
 Reverse engineering
It occurs when someone legally obtains a product, and then discovers how that product works or how
it was put together by carefully studying it, taking it apart, experimenting on it, etc..
 Counterfeiting
Counterfeit goods (commonly called "knockoffs") consist of the imitation of a product. If it is usually
made ​without compliance with quality standards of the infringing product, it sometimes leads to an
acquisition of knowledge, by the method of trial and error.

7. Patents
Designs An invention, whether a product
& Models or a process, which must be
Trademarks
industrially applicable (useful),
The unique way a product be new (novel) A distinctive sign,
looks such as a computer’s and exhibit a sufficient which identifies certain goods
molding “inventive step” or services as those produced /
(be non-obvious) provided by a specific person or
enterprise
Copyrights (i.e. logos, distinctive names for
products and
Rights given to creators for their technologies)
Trade secrets
literary and artistic works
(including technical manuals,
software, specifications, A protected formula or
formulae, schematics, and method, undisclosed
documentation) customer or technical
information,
algorithms, etc.

8. Patents
e.g. Apple vs. Samsung case

9. Trademarks
Registration Number: 3886196 Mark
Standard Character claim: No
Current Status: Registered. The registration date is used to determine when post-registration maintenance
documents are due.
Filing Date: 2010-04-21 Registration Date: 2010-12-07
LAST APPLICANT(S)/OWNER(S) OF RECORD 1. Apple Inc.
GOODS AND/OR SERVICES International Class: 009
Class Status: Active
Telephony software, namely, computer software for making, managing, and receiving phone calls, and for
reviewing, managing, and playing electronic voice messages
Basis: 1(a) First Use Date: 2007-06-29 First Use in Commerce Date: 2007-06-29
ADDITIONAL INFORMATION Color(s) Claimed: The color(s) green, light green, dark green and white
is/are claimed as a feature of the mark.
Description of Mark: The mark consists of a rectangle with rounded corners depicting a stylized white
telephone receiver against a striped green and dark green background. A shade of light green covers the
upper half of the rectangle design.
Design Search Code(s):
16.01.08 - Telephones
26.11.21 - Rectangles that are completely or partially shaded
26.17.06 - Bands, diagonal; Bars, diagonal; Diagonal line(s), band(s) or bar(s); Lines, diagonal
MADRID PROTOCOL INFORMATION USPTO Reference Number: A0022117
International Registration Number: 1058208 International Registration Date: 2010-11-12
Original Filing Date with USPTO: 2010-11-12
International Registration Status: Application For IR Registered By IB
Date of International Registration Status: 2010-12-16
International Registration Renewal Date: 2020-11-12
Irregularity Reply by Date: (DATE NOT AVAILABLE)

10. Trade secrets
e.g. Coca Cola formula

11. Copyright protection is not
Copyrights subject to any formality (unlike
patents, registered designs or
trademarks). The work is
protected automatically upon its
creation. Basically it is the act of
creation which gives rise to
copyright.

12. Designs & Models

13.  Three categories:
 Agreements may be for certain IP rights only
e.g. a license to practice an identified patent or to copy and distribute a certain work of
authorship
 Agreements may be for all the IP rights of any kind that are necessary
to reproduce, make, use, market, and sell products based on a type of
technology
e.g. a license to develop a new software product that is protected by patent, copyright,
trademark and trade secret law
 Agreements may also be for all the IP rights necessary in order to
create and market a product that complies with a technical standard
or specification
e.g. a group of enterprises has agreed on a technical standard to ensure interoperability of
devices—the group agrees to pool their IP rights and license to each other all rights each will
need to manufacture and sell the product

14.  Complexity and level of development of the technology that is to be acquired;
 Actual needs of the recipient; His technological capacity and his ability to use
and/or adapt the technology being purchased
 The relevance, availability and cost effectiveness of alternative technologies
 Price (in cash or any other kind)
 Other proposed terms and conditions for transfer, such as support offered during and
after transfer in absorbing and adapting the new technology, or rights over
improvements or adaptations made by the recipient,
 The negotiating power of both parties (which will, in turn, depend on variables such
as size, technological sector, demand for the technology, number of competitors, etc.)
 The type of relationship envisaged between the two parties (e.g. long-term, short-
term or one-off purchase of products/services.)
 Product liability, indemnity, warranty, etc,
 Whether technical support and training for use of new technology and related
equipment is required.

15.  An IP Audit is defined as
a systematic review of the
IP owned, used or
acquired by a business.
 1st step: identify the
readily identifiable IP
 2nd step: itemize external
or market influences
 Valuation of these items:
How much will it cost to
replace the item if it were
lost? What is the
expected income, e.g. in
the next five years, that
can be generated by the
IP assets?

16.  Assignment of IP Rights
 Licensing Agreements
 Know-How contracts
 Joint Venture Agreements
 Franchise
 Acquisition of Equipment and Capital Goods

17.  IP right is to give its holder a competitive advantage in its
commercial activities, by preventing unauthorized exploitation by
third parties. This is especially important for SMEs, which IP rights
provide with powerful weapons to compete with much larger
companies.
 IP rights can also be licensed or used to help create or finance a
spin-off company. It is therefore possible to derive value from them
even if their owner does not have its own manufacturing capability
(e.g. universities). IPRs protection should form a part of the overall
innovation and business strategy envisaged for the asset.

18. Attorney at law, admitted to Paris and Brussels bars
Professor at La Sorbonne University
thibault.verbiest@ulys.net
France: +33 (0)1 40 70 90 11
Belgium: +32 (0)2 340 88 10
Israel: +972 (0)3 970 70 20