Licensing and Technology Transfer

Introduction

The dissemination and transfer of technology is a major pillar that supports the raison d’être of the patent system. Based on the exclusive rights conferred by a patent, licensing is a permission granted by the patent owner to another to use the patented invention on agreed terms and conditions, while the patent owner continues to retain ownership of the patent. Licensing not only creates an income source for the patentee, but also establishes the legal framework for the transfer of the technology to a wider group of researchers and engineers, who may, in turn, further contribute to the development of the technology concerned. The extent to which the technology is transferred of course also depends on other factors, such as the size of the market.

Since technology licenses play an important role as a catalyst for the further development of technology, providing a legal and policy framework for intellectual property licenses is becoming more and more important. Today, as demonstrated by the developments in bioinformatics and nanotechnology, continuing progress in science and technology has removed the traditional boundaries between technological fields, fusing the technologies to ever more complex new areas of technology, which requires a comprehensive research work and enhanced collaboration. Although the business sector plays a major role for research and development on activities with a commercial objective, many of the fundamental technologies having great implications for everyday life came from publicly funded research that was not intended for immediate commercial use. The importance of ensuring a greater collaboration between the private sector and the public research sector has been recognized in the recent past, and the need for universities and public research institutions to develop intellectual property policies has been emphasized in many countries in order to properly manage the intellectual property rights relating to their research results.

In a globalized economy, technology licensing and transfer of technology are important factors in strategic alliances and international joint ventures in order to maintain a competitive edge in a market economy. Thus, policy tools to facilitate licensing and technology transfer at the international level have often been considered in the context of creating an appropriate climate for investment and economic development.

Although the enforcement of patent rights per se does not raise the question of anti-competitive behavior, any licensing agreements which lead to an abuse of a market position, for example, for achieving and maintaining a monopolistic position, may be considered as an anti-competitive practice under competition law. For example, in the area of information and communication technologies where a number of patents owned by different patentees are involved in one product, a patent pool agreement may be sought by the patentees, which in turn may raise issues as to its effect on competition.

Since every patented technology is unique, every license agreement reflects the particular needs and expectations of the licensor and licensee. However, certain issues are fundamental to the success of a licensing agreement. For example, in order to conclude a license, the value of the patented technology has to be determined. Unlike tangible property, this is not an easy task, but several methods have been developed to facilitate the evaluation of technology.

 

Studies and Articles

Links on these pages, including those to studies commissioned for WIPO, do not imply the agreement of WIPO, its Member States or the International Bureau with the views expressed.

 

Related Sites

The inclusion of a link to a site does not imply the agreement of WIPO, its Member States or the International Bureau with any of the views expressed on the site.

World Intellectual Property Organization

• Intellectual Property for Development
• IP Strategies for Development
• Technoogy Transfer and Licensing
• Small and Medium-Sized Enterprises (SMEs)
  • Commercializing IP
  • Valuation of IP Assets
• WIPO University Initiative
• Bibliographies of academic papers on the WIPO Worldwide Academy web site
  • Exploitation of Patented Inventions
  • Exploitation of IP Assets
• Open Forum on the Draft Substantive Patent Law Treaty, March 1 to 3, 2006
• Life Sciences Symposium on Patent Landscaping and Transfer of Technology under Multilateral Environmental Agreements, August 26, 2008

 

Other Intergovernmental Organizations

• Asian and Pacific Center for Transfer of Technology (APCTT)
• Asia-Pacific Economic Cooperation (APEC)
• European Commission
  • Intellectual Property and Technology Transfer
  • Sixth Framework Program, Model Contract
  • Community Research & Development Information Service (CORDIS)
    • Technology Marketplace
  • Gate2Growth Initiative
• Organisation for Economic Co-operation and Development (OECD
  • Conference on Intellectual Property Valuation and Exploitation, June 30 and July 1, 2005
  • Workshop on Genetic Inventions, Intellectual Property Rights and Licensing Practices, January 2002
  • Guidelines for the Licensing of Genetic Inventions
  • S&T Policy
  • Competition
• World Health Organization (WHO)
  • Commission on Intellectual Property Rights, Innovation and Public Health (CIPIH)
• World Trade Organization (WTO)

 

National/Regional Competition Authorities

• European Commission (EC) - Licensing agreements for the transfer of technology
  • Commission Regulation (EC) No 772/2004 of April 27, 2004 on the application of Article 81(3) of the Treaty to categories of technology transfer agreements
  • Commission Notice - Guidelines on the application of Article 81 of the EC Treaty to technology transfer agreements
     
• Federal Trade Commission (FTC)
  • Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy
     
• United States Department of Justice
  • Antitrust Guidelines for the Licensing of Intellectual Property

 

Non-Governmental Organizations

• Association of University Technology Managers (AUTM)
• Intellectual Property Owners Association (IPO)
• International Chamber of Commerce (ICC)
• International Intellectual Property Institute (IIPI)
• Licensing Executives Society International (LESI)
• American Association for the Advancement of Science (AAAS)/Science and Intellectual Property in the Public Interest (SIPPI) Program

 

Technology Transfer Organizations

• CASTI
• Federal Partners in Technology Transfer
• Knowledge Commercialization Australasia
• National Center for Industrial Property Information and Training (NCIPI)
  • Guide to NCIPI’s Measures for Encouraging Patent Licensing
• National Institutes of Health (NIH), Office of Technology Transfer
• National University of Singapore
• Réseau C.U.R.I.E.
• The Philippines Technology Application and Promotion Institute (TAPI)
• The University Companies Association (UNICO)

Others

• AIPPI:  Q187: Limitations on exclusive IP Rights by competition law [PDF]
• Knowledge Ecology International (KEI)