kt cern Knowledge Transfer Accelerating Innovation Each party

kt. cern

Knowledge Transfer | Accelerating Innovation

• • • • • • Each party represents and warrants to the other that: (a) it has the power to enter into and perform its obligations under this agreement; (b) it has taken all steps necessary to properly execute this agreement; (c) it is a corporation duly organized, validly existing and in good standing under the laws of its jurisdiction of incorporation or formation; (d) neither the execution of this agreement nor its performance hereunder conflicts with any applicable law, rule or regulation or any other agreement to which it is a party; [and (e) during the Term, it will not enter into any agreement, arrangement or understanding that conflicts with its obligations under this agreement. 17. 2. The Licensor represents and warrants to the Licensee that: (a) it is the exclusive owner of all right, title and interest in the Patent Rights, free and clear of any license, lien, security interest or other encumbrance other than as listed in Schedule 6; (b) it has the full right, power and authority to grant the rights and licenses granted to the Licensee under this agreement; (c) to the best of its knowledge, as of the Effective Date, Licensee's exercise of the Patent Rights pursuant to this agreement do not infringe the rights of any third party; (d) it has not granted and will not during the Term grant any other party rights to any of the Patent Rights that conflict with the rights granted to the Licensee under this agreement; (e) to the best of its knowledge, as of the Effective Date, the Patent Rights are valid and subsisting and are not unenforceable, in whole or in part; and (f) as of the Effective Date, there are no suits, proceedings or claims pending, or to the best of its knowledge, threatened against Licensor relating to the Patent Rights (including the ownership, validity or enforceability thereof), or that call into question its right to license the Patent Rights to Licensee or Licensee's right to exercise the Patent Rights, and Licensor is not as of the Effective Date aware of any facts which indicate a likelihood of any of the foregoing. 17. 3. The Licensee represents and warrants to the Licensor that: (a) it will use its reasonable efforts to exploit the Patent Rights; (b) except as expressly warranted by the Licensor under this agreement, it has relied on its own investigations with respect to the rights granted to it under this agreement; (c) it has not entered into, and during the Term will not enter into, any agreement, arrangement or understanding that would restrict or prevent it from fully exploiting the rights granted to it under this agreement; and (d) to the best of its knowledge, as of the Effective Date, its use of the Patent Rights/the manufacture, use, sale, offer for sale and import of the Licensed Products will not infringe the rights of any third party. Knowledge Transfer | Accelerating Innovation

KNOWLEDGE TRANSFER CONTRACTS Myriam Ayass Legal Advisor, KT Group Knowledge Transfer | Accelerating Innovation

Content I. III. IV. V. VI. Why a contract? What is special about a CERN contract? What is a KT contract? What makes it special? Anatomy of a collaboration agreement Contract drafting Knowledge Transfer | Accelerating Innovation

Why a contract? Knowledge Transfer | Accelerating Innovation

• Legal framework for dissemination Knowledge Transfer | Accelerating Innovation

A contract: what for? !? • Agreement attempts to define clearly, and without ambiguity: • WHO • WHAT • WHEN • HOW • FOR HOW MUCH Knowledge Transfer | Accelerating Innovation

What is special about CERN (contracts)? Knowledge Transfer | Accelerating Innovation

The unique legal environment of CERN Treaty-based scientific IGO Operational rather than political Cross-border territory Biggest and most diverse scientific collaborations Governing body: CERN Council Knowledge Transfer | Accelerating Innovation 10

Sui generis Organization Distinct from corporate world, but also from Academia and PROs & RTOs • Non-profit • Lives through contributions of Member States • Research infrastructure • Knowledge Transfer | Accelerating Innovation 11

Purposes (Convention) • • Collaboration among European States in nuclear research of a pure scientific and fundamental character, and in research essentially related thereto Shall have no concern with work for military requirements Results of its experimental and theoretical work to be published or otherwise made generally available Activities: • • Construction of one or more international laboratories for research on high-energy particles Organisation and sponsoring of international cooperation in nuclear research (dissemination of information; exchange of relevant scientific and technical information) Knowledge Transfer | Accelerating Innovation

Consequences Fairness towards and between Member States • • Equal opportunities No competition with industry Warranties/liability • • Focus on dissemination, not profit • Partners’ technologies Reservation of rights No military use • • • Knowledge Transfer | Accelerating Innovation Ensure access to necessary technologies By CERN By partners/licensees Applicable law Arbitration

What is a KT contract? Knowledge Transfer | Accelerating Innovation

Types 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

Numerous legal aspects involved • Contract law • • • Rights and obligations of the partners Intellectual property law • • Legal protection of IP Exploitation Company law • • • Bankruptcy Merger… Employment law (HR aspects) • • • Public international law • • Special status of the organization Competition law • • • Knowledge Transfer | Accelerating Innovation Status of collaborators Insurance Distortion of competition Block exemption for tech transfer Hardcore restrictions vs. permitted clauses

Contracts 101 • Key-principle: 'Freedom of Contract' • but: restrictions by other areas of law (e. g. competition law)! • Contracts are legally binding • Contracts are incomplete (room for opportunism; yet: detailing can be a straitjacket or lead to distrust!) • Dispute resolution (national court? arbitration? friendly settlement? ) • Which national legislation is applicable to the contract? • Negotiation phase (‘Letters of Intent’; break off negotiations; NDA) Knowledge Transfer | Accelerating Innovation

KT contracts 101 1. The Crystal Ball. a) ongoing long-term relationship b) licensor and licensee will be bound together into the future c) tension -- need for flexible contractual language versus need for precision 2. Highly Technical Subject Matter 3. Amorphous Subject Matter 4. Specialized Legal Concepts 5. Many Purposes 6. The Usual Range of Commercial Issues Knowledge Transfer | Accelerating Innovation

• 'Embodiment' of technical/commercial know how • • • Specific legal protection • • Inventions (products / processes) Software / chips; IT-products; documentation (Industrial) Designs & Models Trademarks Trade secrets, 'non-disclosed' know how Patent legislation Copyright legislation; 'Chips' Act Legislation on industrial designs & models; trademarks Some main points of IPR • • exclusive rights principle of 'territorialism' period of protection licensing Knowledge Transfer | Accelerating Innovation

Typical progression NDA • Exchange of information Collaborative R&D • Technology / product development Knowledge Transfer | Accelerating Innovation Joint ownership • Regulating joint IP if applicable Licence • Use and commercialization of technology

Non Disclosure Agreement • 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? • Procedure Drawing up non-disclosure agreements is accessible in the Admin e-guide. Templates are available (names, technology concerned and the purpose of the NDA) • Joint Ownership Agreement What should NOT be included? • No license or transfer of IP Knowledge Transfer | Accelerating Innovation

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 Knowledge Transfer | Accelerating Innovation Agreement between the Commission and the Consortium - Statement of work - General Conditions - IP rules non-negotiable

Anatomy of a Collaboration Agreement Knowledge Transfer | Accelerating Innovation

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

Knowledge Transfer | Accelerating Innovation

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 committee ? Knowledge Transfer | Accelerating Innovation

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

3. Establishment of the IP rules v Clarification of the pre-existing technology “Background IP” 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

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

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

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

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

Remember… All of this is decided and negotiated taking into account what is foreseen to happen AFTER the project ends! Knowledge Transfer | Accelerating Innovation

Contract drafting Knowledge Transfer | Accelerating Innovation

Boilerplate clauses - What is boilerplate? ? ? General belief. . . In fact. . . Standard, usually nonoperative clauses in a contract • Sets out procedures, compliance with law and remedies • • Knowledge Transfer | Accelerating Innovation Vital clauses that through their effect permeate the contract • No common law definition • Examples: • • Notice Interpretation Waiver Force majeure

!!! Be very careful They may be presented as standard terms • Using them as precedent may be inappropriate • Nothing should appear in a contract that you don’t understand • Knowledge Transfer | Accelerating Innovation

Waiver • “The failure of either party to enforce or to exercise at any time or for any period of time any term of or any right pursuant to this Agreement does not constitute, and shall not be construed as, a waiver of such term or right and shall in no way affect that party’s right later to enforce or to exercise it. ” • ‘no waiver’ clause Knowledge Transfer | Accelerating Innovation

Waiver Purpose Effect To prevent one party excusing another party’s breach of contract • To prevent the excusing party’s conduct from being a variation of the contract (in legal sense) • • Knowledge Transfer | Accelerating Innovation Be able to enforce terms of contract irrespective of earlier conduct • Formally reserve rights in the contract

Force majeure • • The term “force majeure” shall mean any circumstance beyond the reasonable control of the party invoking force majeure, including acts of nature, fire and war, which prevent it, wholly or partially, from performing its obligations under the contract. Strikes and other labour conflicts which do not form part of an industry-wide conflict shall not constitute force majeure. Examples Acts of God Acts of nature War Terrorism Changes in law Strikes? • • In CERN definition, only if nation-wide Knowledge Transfer | Accelerating Innovation

Force majeure Purpose • Risk • • • Defines • • • Depends on type of contract Payers vs. providers Unforeseen events Events outside control of parties Sets out procedure to follow • • Short term Long term Knowledge Transfer | Accelerating Innovation Effect of ‘force majeure’ • • • Liability: removed, shared. . . ? Time for performance: extended? Costs increases? Termination: timescale and procedure? Mitigation

Entire agreement Purpose Effect Stop a party from bringing an action for misrepresentation (as opposed to breach of contract) • Ensure that all obligations are clearly and definitively set out (avoid dispute) • • Knowledge Transfer | Accelerating Innovation Ensure that any claim is • • Only for terms actually in contract itself Only for breach of contract

Drafting 1. 2. 3. 4. 5. CERN hereby grants the license to X CERN does hereby grant the license to X CERN grants the license to X The license is hereby granted to X CERN shall grant the license to X as of the date of this agreement Knowledge Transfer | Accelerating Innovation

Drafting - Ambiguity A shall hire X and Y or Z • A shall hire (1) X and Y or (2) Z; • A shall hire (1) X and (2) Y or Z • Knowledge Transfer | Accelerating Innovation A shall hire X and either Y or Z

Drafting - vagueness “Best efforts” • • • Reasonable efforts Commercially reasonable efforts Reasonable best efforts Good faith efforts Commercially reasonable best efforts Knowledge Transfer | Accelerating Innovation Why be vague? Too many variables Precision requires too much negotiation • Being precise in all provisions may not be possible • BUT may give rise to disputes • • • Obligation fulfilled? Condition satisfied? . . .

Thank you Knowledge Transfer | Accelerating Innovation