Technology Transfer Legal and Transactional Issues 5.5.2015

Technology Transfer Transactions
The commercial & entrepreneurial exploitation of Research
Legal Issues, Procedures, Tools
Technology Transfer Transactions (tools, procedures, legal issues)
by Faye ORFANOU, Lawyer – Technology Transfer Coordinator,
founding partner Add-2-Value (www.add2value.com

Defining the required Technology Transfer Transactions
Commercialization Strategy
Business Strategy vs Commercialization Strategy:
The particularities of the path from Research to Market
What is the role of the “Market” in Technology Transfer;
Is it the Market that set the Research Challenges or does Research open up new “Markets”?
(market or technology trends?)
-Academic Target: Peer recognition
-Applied research target: Introduction of new technology with potential diffusion of use
-Commercialization target: Getting into customers
by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

The essential elements of the Commercialization Strategy
From research result to product
•User and Beneficiaries: Converting a research result to a product
•Market Value: Economic value as a main driver
•Market competition: Immediate, potential and “hidden” competition
•Customers: (a) Firms as customers, (b) Collaborating with firms for the entry
to new customer markets

Technology Transfer Transactions I
Contracts of collaboration between firms and researchers
•Potential Forms of Collaboration
-Joint research – collaborative products
-Research mandates
-Consulting contracts
-Production support
-Market support
-Framework contracts
•Balancing the roles among firms and researchers – Particularities of each type of
contract

Technology Transfer Transactions II
Licensing Intellectual Property Rights– Exploitation of IPR
•Intellectual Property Rights
-The wide spectrum: Patents, Copyright, Designs, Trade secrets-know how, Plant varieties etc
The IPR owner – the professor’s privilege
•Exploitation of Property Rights:
•What does exploitation mean? What are the limitations set to the researcher? What are the
opportunities?
•Licencing of IPR
Valuation of IPR –
The time factor
Main terms

Role of University in Technology Transfer Transaction
Specific conditions and restrictions
•Contracts concluded by Researcher or University;
-Potential alternatives
-The consequences of the «professor’s privilege» (Who is the IPR owner?)
•Contracts by the Researchers
-Defining the subject -matter
-Main terms
•Contracts by the University
-Defining the subject - matter
-Terms and conditions: Restrictions for selection of collaboration partner; Application of
public procurement rules?

Technology Transfer Entities – Vehicles I
Creating a spin off with participation of University
Main challenges
•Activity
•Share Capital and Funding
•Administration
•The University as shareholder
•Valuation of shareholding -- Shareholder rights
•Legal framework
•Participation of professors in the administration
•Tax, Accounting and legal framework

Technology Transfer Entities - Vehicles II
Setting up a Start Up by Researchers
•Potential Company Structure
•Participation of researchers and third parties
•Provisional researcher-only shareholding
•Collaboration with University
•Valuation and Valorisation of fee paid to University
•Main challenges
•Researcher as Entrepreneur
•Management Team
•Legal Framework Restrictions
•**Balancing within the University ecosystem

Technology Transfer Entities - Vehicles III
Joint Ventures with firms - Common company
•Alternative Joint Venture Structures
•Main Issues
•Participation of researchers and firm - Shareholder Participation of University
•Bonds and shareholding by firm
•Valuation
•Researcher as Entrepreneur
•Management Team
•Legal Framework Restrictions
•Main challenges
•The next steps – Lifecycle of project
•**Balancing within the University ecosystem

Financing Technology Transfer Transactions
What defines the options?
•Financing a venture of research commercialization
Research programs and State Support
Investors
Smart money by firms as investors + collaborators
Lending
•Financing a new Entity
•Investors: Venture Capitals, Angel Investors, Smart Money
EU Programs
Lending

Contracts as technology transfer transactions tool
Drafting contracts
•Different Legal Systems: The anglo-saxon legal system vs Continental Europe system
•Balancing interests -Commitments – Value - Expectations
The architecture of Rights and Obligations
Main obligations and commitments
Breach of obligations
Termination of contracts
•Terminology and Content accuracy
Important elements for contractual terms drafting
Annexes and Definitions -
A complex Set of Agreements
MOUs, Letters of Intent, Multiple contracts

Facing the legal issues in Technology Transfer
Significant Challenges
1. Understanding of Institutional Framework
2.Commercial strategy and the law
3.Organization and Support – Advisors
4.The right mix between Flexibility and Protection

Technology Transfer Legal and Transactional Issues 5.5.2015

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