Licensing & Tech Transfer
Intellectual property licenses can be amongst a company’s most important business agreements. Entering into a good license agreement enables the owner of the intellectual property right to authorize another party to exercise some or all of the owner’s rights while retaining ownership and control of the IP
Our legal department can draft and/or review license agreements that meet our clients’ requirements and, if required, to record it before the respective Patents and Trademarks Offices.
Advice on setting the price for obtaining a licence
How much is it worth to obtain exploitation rights for a technology?
When negotiating the granting of an exploitation license, one of the points of greatest uncertainty faced by institutions and companies owning industrial and intellectual property rights, or users of other people’s technology, lies in the determination of the price to be paid to the licensor.
The most common forms of pricing are:
(i) the payment of lump sums (often linked to the achievement of certain milestones)
(ii) the payment of a fixed amount for a product manufactured or marketed by the licensee incorporating the licensed technology
(iii) the fixing of a royalty fee applicable to the turnover or to the profit made by the licensee from the exploitation of the licensed rights
(iv) a combination of the modalities described in the previous paragraphs
In the Legal Area we have tools and databases that, starting from information gathered from different sources, institutions and markets all over the world, give us access to reference values that allow us, on the one hand, to justify the price to be requested from potential licensees to whom our clients are willing to license their industrial and intellectual property rights and, on the other hand, to have comparison elements to determine whether a license offer has been formulated under market conditions, in view of its object, exclusive or non-exclusive nature, geographical scope or the technological field to which it belongs.
Based on our wide experience in negotiations of license agreements, from ABG we will be able to accompany you in the negotiation process and advise you on the royalty percentages, the payment structure and the most suitable conditions to propose to the counterpart, and thus help you to close license agreements in favorable and acceptable terms for both parties.
Technology transfer agreements usually improve economic efficiency and reduce duplication of research and development, strengthen the incentive for basic research and development, spur incremental innovation, facilitate diffusion and generate product market competition.
Our legal team has ample experience in this type of agreements, and assists its clients, being small, midsize or large companies to maximize their IP value by drafting and/or reviewing technology transfer agreements.
For further information please contact [email protected]