1. Legal Regime and Technology Transfer of Intellectual Property Rights
3rd EU-China IP Forum
Legal Regime and Technology Transfer of Intellectual Property Rights
MA Zhongfa, Fudan University Law School
22nd November 2018

2. Content
Introduction
Objectives and principles of the legal system of intellectual property rights (IPRs)
Provisions on technology transfer in laws of IPRs
Development of an IPR legal regime that centers around technology transfer
Conclusion

3. 1. Introduction
IP rights are private rights and critical instruments for gaining advantages in competition.
Technology transfer (TT) is an important pathway to solving public issues, eradicating poverty and helping underdeveloped countries achieve modernization.
Are there conflicts between them? If yes, how to reconcile?

4. 2. Objectives of the legal system of IPRs
IP granting and protection are premise to TT.
The “objectives” of TRIPS agreement — the protection and enforcement of IPRs should contribute to:
the promotion of technical innovation and the transfer & dissemination of technology,
the mutual interests of producers and users of technical knowledge, greater social and economic welfare, and balance between rights and obligations.
The objectives of IP regime are not to grant and protect IP rights, which may be regarded as means or ways of realizing the value of the granted IP, but to promote TT and increase the welfare of the people while balancing the rights and obligations of the right holders and users.

5. 2. Principles of the legal system of IPRs
Principles of TRIPS Agreement: provided that the measures are consistent with the provisions of the Agreement, Members may...
Adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development;
Adopt measures needed to prevent the abuse of IPRs by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
Despite those provisions, at the heart of TRIPS is the protection of IPRs.
TRIPS Agreement is legally binding to the Parties.

6. 3. Provisions on technology transfer in laws of IPRs (1)
Outline of the National Intellectual Property Strategy
The Outline is formulated to improve China’s capabilities to create, utilize, protect and administer intellectual property, to development an innovation-driven nation and to achieve the goal of an overall well-off society.
One strategic focus: promote the application of IPRs – by acquiring IPRs for, commercializing and industrializing indigenous innovation, and capturing the market value of IPRs through rights transfer, licensing, pledging and other means.
In specifics, the Outline mentions improvement of mechanisms for pledging of copyright, registration of works & transfer agreements to diversify means of copyright utilization and reduce costs and risks in copyright transactions.

7. 3. Provisions on technology transfer in laws of IPRs (2)
Patent Law:
The right to patent application and patent rights may be transferred.
An approval from a competent authority of a higher level is necessary for a state-owned entity to transfer the right to patent application and patent rights;
Approval from relevant competent authorities of the state council is necessary for a Chinse company or an individual to transfer the right to patent application and patent rights to foreigners;
For the transfer of the right to patent application or patent rights, the parties concerned shall conclude a written contract which enters into effect after registration with and announcement by the Patent Office.
The Patent Law also stipulates that no entity or individual may manufacture, use or sell the patented product or use the patented process for production or business purposes without the authorization of the patentee; in case of exploitation, a license agreement shall be signed and necessary fees payed.
Provisions on compulsory licensing.

8. 3. Provisions on technology transfer in laws of IPRs (3)
Trademark Law
To assign a registered trademark, the assignor and assignee shall sign an assignment agreement and jointly file an application with the trademark office. The assignee shall guarantee the quality of the goods on which the registered trademark is used. After the assignment of a registered trademark is approved, it shall be announced.
When transferring a registered trademark, the trademark registrant shall transfer, along with it, other similar trademarks he has registered for the same kind of goods, and other identical and similar trademarks he has registered for similar goods. The trademark office shall not approve the transfer of a registered trademark that is likely to cause confusion or result in other unfavorable effects, and shall notify the applicant concerned in writing and explain the reasons therefor.
The owner of a registered trademark may, by concluding a trademark licensing contract, authorize another person to use his registered trademark. The licensor shall supervise the quality of the goods on which the licensee uses his registered trademark, and the licensee shall guarantee the quality of the goods on which the registered trademark is to be used. The trademark licensing shall be submitted to the trademark office for file.
If any person is authorized to use the registered trademark of another person, the name of the licensee and the origin of the goods shall be indicated on the goods that bear the registered trademark. Without filing, the trademark licensing shall not be used against a bona fide third party.

9. 3. Provisions on technology transfer in laws of IPRs (4)
Copyright Law:
The right of rental, that is, the right to authorize, with payment, others to temporarily use cinematographic works, works created by virtue of a similar method of film production, and computer software, except for any computer software that is not the main subject matter of rental.
A copyright owner may authorize another person to exercise the rights under the preceding paragraphs (5) to (17), and receive remuneration pursuant to an agreement or this Law.
A copyright owner may assign, in part or in whole, the rights under the preceding paragraphs (5) to (17), and receive remuneration pursuant to an agreement or this Law.
Chapter III Copyright Licensing and Assignment Contracts
The law of conversion of technological achievements
When the subjects are different, assignment and licensing are the premise.

10. 4. Development of an IPR legal regime that centers around technology transfer (1)
The nature of innovation determines that the core of an IPR regime lies in the application thereof.
People and institutions of research and development are increasingly an independent force.
In the current knowledge economy and era of big data, the application of knowledge and technologies imposes objective requirements for technology transfer.
The increasingly critical global public issues impose requirements for knowledge sharing.
Global environmental pollution
Climate change
Poverty
Sustainable development

11. 4. Development of an IPR legal regime that centers around technology transfer (2)
How to?
Internationally:
Make full use of provisions on technology transfer from international IPR treaties, such as provisions on principles and objectives of the TRIPS Agreement, such as Article 31 (Compulsory License), Article 40 (control of anti-competitive practice in contractual licenses, and Paragraph 2 of Article 66, to optimize relevant international regimes.
Effectively implement provisions on technology transfer in multilateral treaties on environmental protection, treaties on climate change, convention on the law of the sea, and sustainable development law, to help less developed countries build technological capacity.
Promote free technology trade; reduce or even lift technology control.
Domestically:
Coordinate current laws and regulations on technology transfer, forming a coherent legal system.
When revising and improving IPR laws, pay attention to and improve legislation on technology transfer.
Make China’s voice heard internationally through the Belt and Road Initiative for the development of a technology transfer regime that serves the shared future for humanity.

12. Conclusion The IPR legal regime is the premise to technology transfer.
The emerging independent R&D forces, increasing complexity of technologies and public issues facing humanity require technology transfer and sharing.
The provisions on technology transfer from international and domestic IPR regimes should be effectively implemented.
Technology transfer should be emphasized in future improvements made to international and domestic IPR regimes.

13. Thanks
for your attention!