Licences, know-how contracts, technology transfer agreements: Today, more agreements are made on the commercial use of IP rights than ever before. At the same time, technologies are becoming more complex. Especially in Europe, the European Antitrust Authority additionally influences the legal design of licensing agreements. Therefore, such agreements should be well regulated and fit the business model. In this way, companies additionally use their inventions for their long-term corporate strategy with the help of technology transfer agreements.
In a technology transfer, knowledge is usually transferred to third parties. On the one hand, this can be industrial production processes and process technologies or, on the other hand, scientific knowledge. The knowledge often comes from companies, research institutions or universities and is to be applied in the production process of third parties, for example.
Registered patents or even pending patent applications can not only be used themselves, but also licensed to third parties through a licence agreement. In this way, both licensor and licensee can benefit: The patent holders generate licensing income thatthey can invest in further research and development in order to continue to survive in competitive markets. They also establish alliances and strategic partnerships with other companies. Licensees, in turn, are enabled to legally use the know-how or innovations of the owners to manufacture products themselves or to optimise processes thanks to new process technologies. Regularly, two licence holders also exchange their own licence within a contract with the other party (so-called cross-licensing).
In addition to patents, utility models and designs, trade marks and other IP rights can also be licensed. RGTH’s patent attorneys advise our clients competently and develop the licensing strategy that is right for them.
Not all licences are of the same type; a distinction is made between exclusive and non-exclusive licences:
- Exclusive licence: Only a single licensee receives the exclusive licence, with which he or she may use the technology or knowledge. There are no other licensees apart from him or her. The subject matter of the licence agreement can thus be used exclusively. The right of use by exclusive licence also excludes the licensor – under German law, the licensee is thus really the only economic user of the subject matter of the licence.
- Non-exclusive licence: If it is a non-exclusive licence, several users per licence object are possible, e.g. the licensor and several licensees.
However, both types of licence can be modified, e.g. by granting exclusive licence rights in specified countries, but only non-exclusive licence rights should apply in other countries. It is also possible to license certain use cases exclusively, while others are handled non-exclusively. Our patent attorneys work with our clients to find the right strategy for their licences and patents.
Technology transfer with licensing agreements can be a component of a long-term corporate strategy, which is why the right patent strategy is essential for ourclients’ IP protection. The questions which rights are granted to licensees and how many licensees there should be are discussed together with our specialist attorneys at RGTH. Furthermore, we clarify questions regarding the securing and possible termination of a licence agreement, e.g. in the event of insolvency of the licensee or licensor.
In addition to drafting licence agreements, the patent attorneys of RGTH support our clients in preparing licence discussions or lead them through the corresponding negotiations. After the conclusion of a licence agreement, we take care of the compliance of the contracting parties with the rights and obligations set out in the agreement. We also discuss adequate licence fees and, if desired, an appropriate purchase price by the licensee or licence purchaser.
Our trained patent attorneys at RGTH, some of whom have many years of experience in industry, competently support our clients in the field of technology transfer agreements including licensing negotiations and monitoring of IP compliance. Their international network also enables them to execute interdisciplinary agreements, always with the aim of implementing the appropriate patent and licensing strategy for our clients.