+ All Categories
Home > Documents > International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement...

International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement...

Date post: 17-May-2020
Category:
Upload: others
View: 2 times
Download: 0 times
Share this document with a friend
18
www.globalnegotiator.com INDEX Parties Recitals Articles 1. Object 2. Territory 3. Technology 4. Exclusivity 5. Obligations of the Licensor 6. Obligations of the Licensee 7. Front-end fee 8. Royalties 9. Minimum royalties 10. Date for payment of royalties 11. Currency for payment of royalties 12. Taxation 13. Prohibition of concession 14. Sub-licenses 15. Subcontracting 16. Registration of patents and trade marks 17. Mention of Licensor and labeling 18. Registration of transactions 19. Control of transactions 20. Entry into force and term of This is a model of agreement to be used by companies for technology transfer, either through granting rights of industrial ownership (license of patents and trademarks) or technical assistance and know how. In the first case, the industrial property and exclusive rights are granted, acknowledged and internationally registered, in order to manufactured and trade products. In the second case, the agreement deals with the transfer of industrial property which has no international legal recognition, but does have intrinsic value. Nº of pages: 8 + 3 (User Guide) Format: Word MODEL OF TECHNOLOGY TRANSFER AGREEMENT
Transcript
Page 1: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

www.globalnegotiator.com

INDEX

PartiesRecitalsArticles

1. Object2. Territory3. Technology4. Exclusivity5. Obligations of the Licensor6. Obligations of the Licensee7. Front-end fee8. Royalties9. Minimum royalties10. Date for payment of

royalties11. Currency for payment of

royalties12. Taxation13. Prohibition of concession14. Sub-licenses15. Subcontracting16. Registration of patents and

trade marks17. Mention of Licensor and

labeling18. Registration of transactions19. Control of transactions20. Entry into force and term

of agreement21. Termination of agreement22. Completion of agreement23. Confidentiality24. Applicable law and

competent jurisdiction25. Language

SignaturesAnnexes

This is a model of agreement to be used by companies for technology transfer, either through granting rights of industrial ownership (license of patents and trademarks) or technical assistance and know how. In the first case, the industrial property and exclusive rights are granted, acknowledged and internationally registered, in order to manufactured and trade products. In the second case, the agreement deals with the transfer of industrial property which has no international legal recognition, but does have intrinsic value.

In the most important aspects of the agreement (technology, exclusivity, royalties, termination of agreement, applicable law and competent jurisdiction, etc.) different alternatives have been provided, for the most appropriate one to be selected according to who drafts the agreement (Licensor or Licensee).

Nº of pages: 8 + 3 (User Guide)Format: WordLanguage: English

MODEL OFTECHNOLOGY TRANSFER AGREEMENT

Page 2: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

TECHNOLOGY TRANSFER AGREEMENT

Date: ...............................................................................................................................................

Between:

...................................... [company legal name] whose registered office is at ............................................................. [address, city and country] and registration/fiscal number is ..................., represented by ............................................................. [surname and first name, position].

and:

................................... [company legal name] whose registered office is at .............................................................. [address, city and country] and registration/fiscal number is ...................., represented by ............................................................. [surname and first name, position].

Both parties declare a mutual recognition of their capacity to undertake the following:

I. That the company .................... (hereafter, “the Licensor”) owns the patents and trademarks as set out in Annex I of the present agreement. It therefore has full rights to grant licenses for the exploitation of the said patents, to pass on the appropriate information necessary for the aforementioned exploitation, and to authorize the inclusion of the trade marks into products manufactured and sold.

II. That the company .................... (hereafter, “the Licensee”) wishes to obtain license to manufacture, use and sell the products covered by the patents and trademarks as set out in Annex 2 of the present agreement.

Both Parties agree to the following:

ARTICLE 1. OBJECT

The object of the present agreement of technology transfer is: a) the license to manufacture the products described in Annex 1; b) all know-how and technical assistance necessary for the exploitation of the said patents and the manufacture of the aforementioned products; c) the use of the trademarks as set out in Annex 1, for products manufactured under license.

ARTICLE 2. TERRITORY

The licensed rights of patent, trademark and know-how granted by the Licensor to the Licensee shall be valid only within the following territory .................... [ include country o

2

Page 3: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

countries]. The Licensee shall not exploit the licensed technology, nor shall it sell products manufactured under license, in countries covered by parallel patents as set out in Annex 1 for a period of .......... years as from the date on which the said products were first put on sale in the territory described in the present agreement.

ARTICLE 3. TECHNOLOGY

Alternative A. The license may be used in all areas of technical activity in which the licensed technology is applied and for any use which the said technology may imply. Should it be deemed necessary, the Parties shall include in the annexes to the present agreement a description of all uses of the technology not foreseen at the time of the signing of the present agreement, but which may arise at any time throughout the term.

Alternative B. The license is granted exclusively for the following applications of the technology: .............................................................................................................................................................................................................................................................................

ARTICLE 4. EXCLUSIVITY

Alternative A. The License of patents and trademarks shall be exclusive, and consequently the Licensor shall not exploit the same licenses itself, nor commercialize the products under license, nor grant other licenses in the territory described in the present Agreement for the duration of the same. Similarly, it shall not enter into agreements granting the know-how related to the said technology.

Alternative B. The license of patents and trademarks shall be exclusive; nevertheless, the Licensee reserves the right to exploit the patents itself and commercialize the products under license in the territory described in the present Agreement for the duration of the same. It shall not grant licenses to third parties, nor enter into agreements granting the know-how related to the said technology.

Alternative C. The license of patents and trademarks shall not be exclusive. The Licensor may exploit the said licenses itself, commercialize the products under license, and grant licenses to third parties in the territory described in the present Agreement for the duration of the same. It shall also be entitled to enter into agreements granting the know-how related to the said licenses. Nevertheless, should more favorable conditions be granted to another licensee in the same territory, the Licensor shall be obliged to grant the same conditions to the Licensee.

ARTICLE 5. OBLIGATIONS OF THE LICENSOR

The following are obligations to be assumed by the Licensor: a) to provide the Licensee all designs, plans, technical documents and know-how necessary for the manufacture of the products; b) to supply the Licensee with all materials and components, as well as the technical assistance and personnel training necessary for compliance with the present agreement. The cost of such materials and actions shall be borne by the Licensee, and if necessary, shall be stipulated in an Annex to the present agreement; c) to inform and make available to the Licensee any modification or perfection involving improvements to the products under license for the term of the present agreement. The Parties shall reach agreement as to whether such improvements require an increase in the royalties stipulated in the present agreement; d) to

3

Page 4: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

keep in force all patents and trade marks on which this agreement is based; otherwise, to give .......... months’ warning to the Licensee before their expiry as to the legal proceedings necessary to conserve their validity.

ARTICLE 6. OBLIGATIONS OF THE LICENSEE

The following are obligations to be assumed by the Licensee: a) to manufacture the licensed products to a standard of quality equal to those manufactured directly by the Licensor, thereby authorizing the Licensor to make quality control tests of such products; b) to communicate to the Licensor any modification, perfection or new applications of the licensed technology; c) not to manufacture or sell products which may compete with those covered by the license, nor products of companies competing with the Licensor; d) to protect the technology transferred from the actions of third parties within the territory, and to give due information to the Licensor as to any violation of which it may become aware.

ARTICLE 7. FRONT-END FEE

In exchange for the use of the license of patent and trade mark, the Licensee shall pay the Licensor the sum of ..................... as front-end fee. This amount shall be paid on the signing of the agreement and shall not be returnable.

ARTICLE 8. ROYALTIES

The Licensee shall pay the Licensor royalties of:

Alternative A. ........ % on the price per item of sales to customers, to be calculated on the net amount as it appears on invoices, not including additional factors such as packaging, transportation and insurance, taxes or duties of any other kind.

Alternative B. The sum of ................... for each item sold of the licensed product.

Alternative C. The sum of ................... for each item sold of the product manufactured either by the Licensee or by third parties.

Alternative D. The sum of ................. to be paid annually, with an increase of ...... % for each year of term.

ARTICLE 9. MINIMUM ROYALTIES

The minimum royalties to be paid by the Licensee to the Licensor shall be no less than the following amounts:

For the first year of the Agreement: ..............................................................................................

For the second year of the Agreement: .........................................................................................

For the third and following years: ..................................................................................................

4

Page 5: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

Should the Agreement be ended before the end of any year, the minimum royalties shall be reduced proportionately. The minimum royalties shall be paid within one month of the end of each year of the term of the agreement.

ARTICLE 10. DATE FOR PAYMENT OF ROYALTIES

Alternative A. The payment of royalties shall be made transaction by transaction, within .......... calendar days as from the date of invoice sent by the Licensee to its customers, once the appropriate invoice has been sent by the Licensor to the Licensee.

Alternative B. The payment of royalties shall be made every quarter year. The Licensee shall send to the Licensor complete details as to the transactions carried out, within one month of the end of the quarter in question. The Licensor shall send an invoice to this end to the Licensee, and payment shall be made in no more than .......... calendar days thereafter.

Alternative C. The payment of royalties shall be made annually. The Licensee shall send to the Licensor a detailed report of all transactions made, within one month of the end of the year in question. The Licensor shall send an invoice to this end to the Licensee, and payment shall be made in no more than .......... calendar days thereafter.

ARTICLE 11. CURRENCY FOR PAYMENT OF ROYALTIES

Alternative A. The Licensee shall pay royalties to the Licensor in the same currency or currencies in which the transactions have been made.

Alternative B. The payment of royalties shall be made in .......... [ insert currency]. The applicable exchange rate between this currency and the currency in which transactions are effected shall be that of the date on which the Licensee invoices its customer, where the payment is to be made transaction by transaction; or that of the last working day of the quarter or year, where royalties are to be paid quarterly or annually.

ARTICLE 12. TAXATION

The .................. [Licensor or Licensee] shall be liable for direct and indirect taxation to be paid in the country of the Licensee arising from payments made to the Licensor according to the present Agreement. Where there exists agreement on double taxation between the countries of the Licensor and the Licensee, the Licensee may reclaim the appropriate taxation on condition that it send to the Licensor all the invoices and fiscal documents which may be required by the fiscal authorities of the Licensor’s country.

ARTICLE 13. PROHIBITION OF CONCESSION

The Licensee shall not concede the use of the licenses without prior written consent from the Licensor.

ARTICLE 14. SUB-LICENSES

5

Page 6: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

The Licensor may authorize the Licensee to issue sub-licenses for the application of the patent and/or use of the trade mark, on condition that the sub-licensee is subject to the terms and conditions of the present Agreement. The actions of the sub-licensee shall not exonerate the Licensor from the rights and obligations undertaken under the present Agreement.

ARTICLE 15. SUBCONTRACTING

The Licensee shall not, without written consent from the Licensor, subcontract the manufacture of products involving the use of the technology licensed by the present agreement.

ARTICLE 16. REGISTRATION OF PATENTS AND TRADE MARKS

Each Party shall be entitled to request the registration of the licenses of patents and trademarks, on condition that such action is possible under the law of the country in which the license is to be used. Each Party shall concede, when necessary, the powers of representation required to this end. The costs and fees of registration shall be borne by the Party which requests it.

ARTICLE 17. MENTION OF LICENSOR AND LABELLING

The Licensee shall mention on all products which it manufactures under license and supplies to its customers, the following text: Manufactured under licence of ..................... [name of Licensor]. The said text shall be included on the labelling of all products sold through retail outlets.

ARTICLE 18. REGISTRATION OF TRANSACTIONS

The Licensee shall keep account of all transactions effected under license, in which there shall be explicit and accurate mention of the number of products manufactured and sold, the reference numbers given to each as well as any other indications, particularly those pertaining to the price of sale to customers, required for the calculation of royalties payable.

ARTICLE 19. CONTROL OF TRANSACTIONS

The Licensor shall be entitled to inspect the register of transactions made by the Licensee and their correspondence to the latter’s general accounting activities. The cost of such inspection shall be borne by the Licensor, but shall be repaid by the Licensee where the inspection is prolonged or repeated on account of accounting errors made by the Licensee or where transactions exceeding ....... % of the amounts declared by the Licensee are detected.

ARTICLE 20. ENTRY INTO FORCE AND TERM OF AGREEMENT

The agreement shall enter into force, once signed by the Parties, the date written above. Where the validity of the agreement or payments are subject to any kind of official registration or prior authorization, the date of the said registration or authorization shall be the date of

6

Page 7: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

entry into force of the present agreement. The agreement will have a term of ......... years, unless the Parties decide to extend it by means of a later written agreement.

ARTICLE 21. TERMINATION OF AGREEMENT

Either party may terminate the present Agreement, owing to the default or violation by the other Party of any of the agreements established herein, or through the undertaking of any justified legal action pertaining to laws applicable hereto. The following shall also be causes for the termination of the present agreement: a) the failure to effect necessary prior registration or authorization within ........ months of the signing of the present agreement; b) the contesting of the licensed technology or know-how; c) any changes in the constitution or ownership of either Party which may affect significantly the results which the other Party may reasonably expect to obtain from the present agreement.

ARTICLE 22. COMPLETION OF AGREEMENT

Alternative A. On completion of the present Agreement, the Licensee shall not manufacture the licensed products nor reveal to any third party the licensed technology acquired from the Licensor. This shall remain in force for as long as the licensed patents and know-how continue to be valid.

Alternative B. On completion of the present agreement, the Licensee shall be entitled to continue manufacturing the products and using the licensed technology acquired from the Licensor without having to pay any further royalties. Nevertheless it shall refrain from revealing any document or information provided by the Licensor that is less than ......... years old.

ARTICLE 23. CONFIDENTIALITY

The Licensee undertakes, for the term of the present agreement and beyond its completion, not to communicate to third parties any technical, commercial or financial information provided by the Licensor. On completion of the agreement, all documentation supplied shall be returned. Similarly, the Licensee shall require all its employees who may have access to the documentation and information provided by the Licensor to treat the same as secret and not pass it on to any third parties. The duty of confidentiality of employees shall go beyond the end of their employment or contractual relationship with the Licensee.

ARTICLE 24. APPLICABLE LAW AND COMPETENT JURISDICTION

Alternative A. Any disagreement which may arise from the present Agreement shall be resolved by the Courts and Tribunals of the Licensor’s country, and particularly, those of the local authorities where its headquarters is located, unless this Party should take legal action in the Courts and Tribunals where the Licensee’s headquarters is located.

Alternative B. Any disagreement arising from the present agreement shall be resolved by the rules and regulations of Conciliation and Arbitration of the International Chamber of Commerce, by one or more arbitrators appointed accordingly, complemented where necessary by the procedural rules of the Licensor’s country. The place of arbitration shall be ........... [city and country] and the proceedings shall be carried out in ………… language.

7

Page 8: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

ARTICLE 25. LANGUAGE

The whole text of the present Agreement, as well as the documents derived from it, including those in the Annex, have been written in:

Alternative A. English, and is therefore considered to be the only authentic text for all legal effects.

Alternative B. …………… and English, both versions being deemed authentic, but for legal purposes the text in .......... is to be given priority of interpretation.

Both Parties declare their conformity to the present agreement, which is signed in ...... copies, each of which shall be considered an original.

Signed by a duly authorized representative of the Licensor and the Licensee.

Alternative A. At………….., the………………..

Alternative B. The Licensor, at ……………, the……………, and the Licensee at…………., the………………..

For and on behalf of the Licensor For and on behalf of the Licensee

_____________________________ _______________________________Mr./Mrs. ........................................... Mr./Mrs. .......................................................................................... [position] ............................................... [position]

© Copyright Global Marketing Strategies (ISBN 978-84-92570-77-5)

8

Page 9: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

ANNEX 1. PATENTS AND TRADEMARKS(ARTICLES 1 AND 2)

PATENTS

Registration number Registration office (country) Countries covered

TRADEMARKS

Name Registration number Registration office(country) Countries covered

ANNEX 2. PRODUCTS(ARTICLE 1)

Product Uses and applications

9

Page 10: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

Agreements drafted by the legal experts of Global Negotiator cover all relevant aspects that are negotiated and agreed in the different types of business between companies. However, when these agreements are used you should take into account some recommendations common to all of them that are described in this User Guide. DATE

The date when the agreement comes into force is the one that appears in its header, as mentioned in the final paragraphs of the agreement, before signatures (This Agreement comes into force on the date written above).

In some agreements -for example in the Supply Agreement- the date of coming into force is also mentioned in one of the clauses. In these cases you have to verify that the two dates inserted in the agreement (in the heading and in the corresponding clause) are the same, in order to avoid discrepancies.

PARTIES

Be sure to insert in the first page of the agreement the full details of the Parties:

When a Party is a company you must insert the following information: legal name, legal form (limited, incorporated, etc.), full address, registration data and fiscal identification number.

When a Party is an individual that works as independent professional (for example a commercial agent) you must insert the following information: full name, profession, full address and fiscal identification number.

CLAUSES

Clauses with different alternatives: choose the most favorable

In the most important clauses of each agreement (exclusivity, payment terms, applicable law and competent jurisdiction, etc.) several drafting alternatives are proposed so you can choose the most appropriate to each situation. Therefore, the user before submitting the agreement to the other Party must choose the alternatives that seem best suited to their interests, and eliminate the rest. Clauses with blank spaces to be completed

In several clauses of the agreement blank spaces appear with dots (.......................) that the user has to complete inserting text. Following the dots, between brackets, you will see the data and explanations to insert the text.

When the text between brackets is in normal letters (the same as the agreement) and separated by "," or the word "o", the user must insert one of the options suggested.

10

USER GUIDE

Page 11: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

Example of blank space (........) with options to select between brackets:

Orders handled before completion of the present Agreement which produce sales transactions within .......... [1, 2, 3, 6] months shall entitle the Agent to receive the corresponding commission. In this case the user must choose between options 1, 2, 3 or 6 months and insert one in the blank space (........).

When the text between brackets is in italics the user has to insert the data and information requested and eliminate the bracketed text.

Example of blank space - (.........) to insert text:

Both parties, by mutual consent, resolve to refer any dispute to the Rules of Conciliation and Arbitration of the International Chamber of Commerce by one or more arbitrators appointed in accordance with said Rules. The place of arbitration shall be ........... [city and country]. In this case the user must insert in the blank space (...........) the city and country chosen to conduct the arbitration and afterwards eliminate the bracketed text [city and country].

Notices Clause

Sometimes it may happen that the official address of the Parties which appear at the beginning of the agreement is different from which is to be used for communications between the Parties during the terms of the agreement. In this case the user should include at the end of the agreement a Notices Clause.

Example of Notices Clause:

Notices. - In order to comply with their contractual obligations, the Parties establish the following address for the provision of notices related to this agreement:- Party 1 ............................................................. [insert full address].- Party 2 .............................................................. [insert full address].

ANNEXES

The agreements incorporate some Annexes, each of them, referenced to the corresponding Clause. Annexes are drafted in commonly used formats, although the user must adapt these formats and the text inserted in them to each particular situation.

SIGNATURES

People who sign

Persons signing the agreement on behalf of the company must have the authority to do so and preferably, be entitled on the basis of a power of attorney. Below the signature, in addition to the full name of the person that signs his/her position must be inserted. When one of the Parties who signs is a natural person (for example a commercial agent in a Agency Agreement) obviously he or she is the person that has to sign the agreement.

11

Page 12: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

The laws of some countries require that agreements, to be valid, shall be signed in front of witnesses or a public notary. Therefore, before signing a agreement you should be informed about the requirements that may exist in each country.

Place and date of signature

Usually agreements are signed by both Parties on the same date and place. Nevertheless, in international agreements, due to physical distance, it is common that each of the Parties sign in different dates and places. This agreement provides for both alternatives so it comes to choosing the most appropriate to each situation.

Number of copies

Usually, the Parties sign two copies of the agreement, each Party retaining one of them, but cal also arise the need to sign more copies. In this case all you have to do is mention explicitly the number of copies to be signed in the paragraph that is included at the end of the agreement (Both Parties declare their conformity to the present agreement, which is signed in ...... copies, each of which shall be considered an original).

GENERAL RECOMMENDATIONS

The Parties must sign all pages of the agreement, including Annexes, so they are also valid. It is better to use ball point or pen (not pencil) in a color other than black (e.g.: blue); this makes it easier to distinguish an original document from a photocopy.

It is preferable (although no mandatory) to express sums of money and percentages in words and figures. Of course, the words and figures for a given amount must match exactly. You also must insert the currency in which the amounts are expressed. It is advisable to use the rules establish by ISO that name each currency by three capital letters (EUR for euro, USD for dollar, GBP for sterling pound, JPY for Japanese yen, etc. - you can get the acronyms of every currency in the website www.oanda.com).

Once you have chosen the best alternatives of each clause and have completed the blank spaces you should revise the whole agreement to remove remaining paragraphs and correct any errors.

LEGAL WARNING

Depending upon your particular situation this agreement might not meet your needs and requirements. In case of doubt, you should consult a legal advisor.

Global Marketing Strategies, S.L. as publisher and copyright holder of this agreement disclaims all warranties, whether express or implied, respecting the legal content of this agreement. For any claims arising out or in connection with the use of this agreement, Global Marketing Strategies shall be limited to a refund of the purchase price.

12

Page 13: International Technology Transfer Agreement€¦  · Web viewIn the second case, the agreement deals with the transfer of industrial property which has no international legal recognition,

13


Recommended