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Knowledge Transfer | Accelerating Innovation Charlyne Rabe 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 Technology transfer contracts are aimed at regulating the CERN technology transfer activities. CERN technology transfer activities means activities where 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:  Transfer of the CERN Technology directly through a license agreement Agreement which defines the conditions under which CERN makes available its technologies to a third party.  Transfer of the CERN Technology directly through a consultancy and service agreement 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 Collaborative R&D Agreement Joint Ownership Agreement Licence Agreement License Agreement

Knowledge Transfer | Accelerating Innovation Charlyne Rabe Collaborative R&D Project NDA Joint Ownership 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)Drawing up non-disclosure agreements What should NOT be included? No license or transfer of IP

Knowledge Transfer | Accelerating Innovation Charlyne Rabe Collaborative R&D Project Joint Ownership Agreement Definition : Agreement where the research goals are agreed by the Partners, who all contribute technologies and/or resources to generate technological results having a potential for commercial exploitation. ≠ Contract research where the project is mainly executed by CERN but only financed by a commercial partner. NDA Collaborative R&D Agreement

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

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

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 SectionSubject « Between» 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 Joint Ownership Agreement II. Highlights on an R&D Collaborative Agreement KT is only involved in R&D collaborative projects related to CERN technology transfer activities as defined above. Definition of Collaborative R&D Agreement (= agreement where the research goals are agreed by the Partners, who all contribute technologies and/or resources to generate technological results having a potential for commercial exploitation.)

Knowledge Transfer | Accelerating Innovation Charlyne Rabe II. Highlights on an R&D Collaborative Agreement 1. Definition of the project (the “Project”)  What are the Project objectives ?  How do you want the Project to be managed?  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  Define the exact role of each party  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  Clarification of the pre-existing technology “Background IP”  Identification of the Background IP  Ownership of the Background IP remains unaffected  Ownership of the technical results generated in the course of the agreement and related to the project “Foreground IP”  Ownership vested in the party having generated it  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  Very important in order to acknowledge the role of each party in the project but also to disseminate the results of the Project.  Conflict of interest between research institutions and industrial partner.  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  Different type of warranties: timely performance, results, infringement of third party rights.  Liability of each party for actions or omissions under the R&D Collaborative Agreement.  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  Duration and termination of the Project  Applicable law and Jurisdiction clauses  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  Bear in mind the process to follow during a R&D Project  We are here to help !

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