What is Technology Transfer Agreement Drafting?
A technology transfer agreement is a contract between a technology licensor and licensee. It outlines the specific technology being transferred, such as software, patents, and/or data, and provides details about how it will be used.
If you’re drafting a technology transfer agreement, there are some important things to consider so that it’s clear and valid to protect both parties’ interests.
Read the rest of this article to explore what key terms you should include in a technology transfer agreement, how to draft it, and how hiring a qualified lawyer can assist you with the contract-drafting process.
What are Key Terms to Include in a Technology Transfer Agreement?
A technology transfer agreement usually contains essential terms, such as the following:
- Parties. The agreement should name both parties with their legal names so it’s clear who is receiving the technology and who is transferring it.
- Scope. This should describe the type of technology that will be transferred. It should include permitted and prohibited activities.
- Confidentiality. It’s important for the agreement to explain how the technology and any included data should be protected.
- Intellectual property (IP) rights. It should be clear which party owns the IP rights and how licenses are transferred to the recipient.
- Payments. How the licensor will be compensated by the licensee for using the technology must be stated for clarity. This should include information about royalties and payment schedules.
- Termination. The agreement must state how it can be terminated and if there are any post-termination obligations, such as returning the proprietary data.
What are Tips for Drafting a Technology Transfer Agreement?
A carefully drafted technology transfer agreement must address some important considerations. These include the following.
Research the Laws and Regulations
Since technology laws are always changing, it’s important to stay updated on them so you can make your agreement legally compliant to avoid disputes.
State the Transfer Specifics
You want to be as precise about the technology being transferred as possible to prevent ambiguity. This should include detailed technology descriptions, such as its specifications, features, components, documentation, and technical data.
Explain Background and Foreground IP
To prevent IP ownership from being a source of disputes, your agreement should specify who owns background IP that was created before the contract, and foreground IP that’s created during the agreement term. After specifying who owns the IP, include information about if and how it can be used after contract termination.
Include Due Diligence
Both parties should conduct due diligence to uncover any liabilities or risks. If parties want these obligations to continue as part of the tech transfer, they can be included in the agreement.
You’ll want to explain in the agreement what due diligence activities will be conducted, such as investigating if parties are solvent and verifying that there are no IP disputes that could hamper the transfer.
Mention a Transfer Plan
The agreement should include information about how the technology transfer will actually occur so that both parties gain clarity. This is especially important if the transfer is complex. Your plan can include mentioning the delivery dates and what documentation is required to streamline the process and prevent challenges.
Include a Dispute-Resolution Method
The technology transfer agreement should explain how parties will settle disputes. You should state the governing law and jurisdiction, as well as what events allow contract termination. If there are any post-termination obligations, these must be included, such as how private information should be returned or destroyed.
How Does a Lawyer Perform Technology Transfer Agreement Drafting?
A lawyer can help you to draft a technology transfer agreement that’s legally solid, clear, and reasonable. They’ll use their expertise and contract-drafting experience, with their activities including:
- Identifying the technology so that it’s specifically described.
- Establishing the correct transfer scope, such as what rights are granted.
- Protecting parties’ intellectual property and confidential information by including appropriate provisions, such as how trade secrets can be protected.
- Allocating risk appropriately, such as by including warrantings and indemnities.
- Addressing regulatory compliance. A lawyer has in-depth legal knowledge about all the laws and industry regulations to ensure your technology transfer agreement is clear and enforceable.
- Tailoring the agreement to the specific transaction. They’ll consider what technology is being transferred and for what industry, so that you achieve the appropriate provisions.
- Reviewing the technology transfer agreement if you’ve already drafted it. This will give you peace of mind that it’s detailed and comprehensive.
Where Can You Find a Lawyer for Technology Transfer Agreement Drafting?
Now that you know the practical ways in which a lawyer can help you draft your technology transfer agreement, you might be wondering where you can find one.
Online legal marketplaces such as ContractsCounsel make it easy to connect with a knowledgeable and experienced lawyer.
As one of the largest online legal platforms, ContractsCounsel gives you access to thousands of vetted lawyers who regularly assist clients with their contract drafting and review requirements.
Here’s how to request a review of a technology transfer agreement on the ContractsCounsel platform:
- Start by posting your project on the ContractsCounsel marketplace. It’s free!
- Include some details about what you need so lawyers know how to help you.
- You’ll receive multiple lawyer bids from lawyers on the platform.
- Review the lawyers’ profiles based on criteria such as their location, experience, and client ratings. All this data is provided by the platform for your convenience.
- Select the best lawyer for your requirements and hire them to draft your technology transfer agreement for a flat fee.
