cern chknowledgetransfer CONTRACTS FOR TECHNOLOGY TRANSFER Charlyne RABE

cern. ch/knowledgetransfer

CONTRACTS FOR TECHNOLOGY TRANSFER Charlyne RABE KT Legal Advisor Knowledge Transfer | Accelerating Innovation Charlyne Rabe

• KT group aims at disseminating CERN’s Knowledge and Technology for the benefit of Society. • Such dissemination always requires legal frameworks. • One of the services provided by KT office is the negotiation and the drafting of such TT contracts. Knowledge Transfer | Accelerating Innovation Charlyne Rabe

I. Overview of TT contracts II. Highlights on a collaboration agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

I. Overview of TT contracts KT group is managing all the CERN technology transfer activities with industry and any agreements related to. Agreement where by CERN transfers its technologies or uses them to create new technologies : - for applications in research domains other than Particle Physics, - or for commercial exploitation. Knowledge Transfer | Accelerating Innovation Charlyne Rabe

I. Overview of TT contracts List of agreements handled by the Knowledge Transfer Group Non-disclosure Agreement Collaborative R&D Agreement Contract Research Agreement Joint Ownership Agreement Consultancy and/or service agreement Consortium agreement (IP part) License Agreement (including software license) Knowledge Transfer | Accelerating Innovation Charlyne Rabe

I. Overview of TT contracts Different types of technology transfer: v Transfer of the CERN Technology directly through a license agreement • v Transfer of the CERN Technology directly through a consultancy and service agreement • v Agreement which defines the conditions under which CERN makes available its technologies to a third party. Agreement where CERN agrees to provide services (service agreement) or expert advice or specific studies (consultancy agreement) to a third party under specific conditions. Transfer of the CERN Technology within the framework of a R&D project • Example through a Collaborative R&D project Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Collaborative R&D Project NDA License Agreement Licence Agreement Collaborative R&D Agreement Joint Ownership Agreement License Agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Collaborative R&D Project NDA When and why? • Each time confidential information is exchanged between CERN’s employee and a third party, • To protect information which are not covered by a patent yet or which are not patentable but that you want to keep secret (ex: Know-How). What information should be included? Joint Ownership • Procedure Drawing up non-disclosure agreements is accessible in the Admin e-guide. Templates Agreement are available (names, technology concerned and the purpose of the NDA) What should NOT be included? • No license or transfer of IP Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Collaborative R&D Project NDA Collaborative R&D Agreement Joint Ownership Agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Collaborative R&D Project NDA Collaborative R&D Agreement ü Definition Joint Ownership Agreement ü IP Sharing ü Joint IP protection conditions ü Joint IP exploitation conditions Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Collaborative R&D Project NDA Collaborative R&D Agreement Joint Ownership Agreement License Agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Final step of the technology transfer process : the exploitation of the technology through a license agreement • • Definition Standard clauses • Scope of the license • Financial conditions • Technical support • Additional return to CERN • Acknowledgement of CERN • Duration of the license, termination conditions • Warranties and Liabilities Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Collaborative R&D Project With a public external funding (Ex : EU Project) NDA Consortium Agreement The Partners have less autonomy for the negotiation of the consortium agreement Agreement between the partners and the project coordinator - Work organization - IP specific provisions - Liability - Future exploitation and dissemination of the Results Joint Ownership Agreement Grant Agreement between the Commission and the Consortium - Statement of work - General Conditions - IP rules non-negotiable Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on Collaboration Agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement Section « Between» Subject • The Parties «Considering that » • The preamble «The Parties have agreed as follows» • Definition • Scope of the agreement • Rights and obligations of the parties • Intellectual Property • Confidentiality • Publications • Warranty/Liability • Entry into force/Duration/Termination • Applicable law/Jurisdiction Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement • KT is only involved in an certain type of R&D collaborative projects. • Agreement where by CERN transfers its technologies or uses them to create new technologies : • for applications in research domains other than Particle Physics, • or for commercial exploitation. Joint Ownership Agreement Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement 1. Definition of the project (the “Project”) v What are the Project objectives ? v How do you want the Project to be managed? v Do you need a board committee ? Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement 2. Responsibilities and Resources of the Parties v Define the exact role of each party v Define the resources of each party (human, material, financial) Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement 3. Establishment of the IP rules v Clarification of the “Background IP” pre-existing technology v Identification of the Background IP v Ownership of the Background IP remains unaffected v Ownership of the technical results generated in the course of the agreement and related to the project “Foreground IP” v Ownership vested in the party having generated it v Possibility of joint ownership Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement 4. Confidentiality When an NDA covers the discussion before entering into a collaboration, the confidentiality clause will cover all the confidential information exchanged during the Project. Knowledge Transfer | Accelerating Innovation Charlyne Rabe

III. Highlights on an R&D Collaborative Agreement 5. Publications v Very important in order to acknowledge the role of each party in the project but also to disseminate the results of the Project. v Conflict of interest between research institutions and industrial partner. v Standard clause : Right to publish scientific results obtained in the execution of the Project but with prior written approval of the other parties. Knowledge Transfer | Accelerating Innovation Charlyne Rabe

III. Highlights on an R&D Collaborative Agreement 6. Warranty/ Liability v Different type of warranties: timely performance, results, infringement of third party rights. v Liability of each party for actions or omissions under the R&D Collaborative Agreement. v CERN’s status as Intergovernmental Organization leaves no space for negotiation with regard to warranty and liability clause. Knowledge Transfer | Accelerating Innovation Charlyne Rabe

II. Highlights on an R&D Collaborative Agreement 7. General clauses v Duration and termination of the Project v Applicable law and Jurisdiction clauses v As an Intergovernmental organization, CERN enjoys immunity from jurisdiction. Obligation for the parties to resort to arbitration procedure in case of dispute. Knowledge Transfer | Accelerating Innovation Charlyne Rabe

v Identification of KT components v Do not hesitate to contact us if you have any questions Knowledge Transfer | Accelerating Innovation Charlyne Rabe

Thank you Knowledge Transfer | Accelerating Innovation Charlyne Rabe