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Key points for guaranteeing an efficient process

Every technology transfer process is complex as they involve a wide range of factors and agents. That is why technology transfer processes need to be planned and controlled in order for them to be efficient and to meet the participants objectives.

The main stages of the technology transfer process are shown below with the key aspects highlighted:

A) Prior Analyses and Assessments

Technology.- The owner must study several aspects including the maturity of the technology, as well as the level of innovation, obsolescence and competitiveness. It is therefore essential to have information about competing technologies and to analyse the advantages of developing the technology over others, both from a functional and a cost point of view.

The acquirer must also analyse the technology to be transferred assessing several factors including its impact on the organisation, maturity, adaptability of the technological components and existing substitute technologies.

Market.- The owner must find out whether there are customers who are interested in its technology, and if they are willing to assimilate its price.

It is also recommendable to analyse the substitute technologies, their position in the market and the characteristics of the companies which own them in order to design the most effective marketing strategy for the product.

The acquirer should also analyse the above-mentioned factors in order to determine whether the alternative proposed by the owner meets its needs and positively satisfies its business expectations.

Intellectual property and copyright.- The owner of the technology should decide whether it can be protected as a whole, or in part, through one or several types of intellectual property, and whether protecting it will provide value to the receiver. It should also assess the countries in which the protection will bring profits when it is marketed.

From the point of view of the receiver of the technology, it is recommendable to study the protection level and coverage (type, countries, applications and duration), as well as the existence of possible disputes or encumbrances which may limit transfer possibilities.

B) Search for collaborators

The success of the technology transfer operation lies in achieving the greatest and strongest link between the business objectives and capacities of the technologys transferor and acquirer. That is why it is very important to select the collaborators carefully, ensuring that they possess not only the necessary resources, but also compatible objectives and motivation.

C) Protection of exchanged information

In order to protect confidential information exchanged in the search process for partners or collaborators, as well as during the negotiation stage, it is recommendable to sign prior non-disclosure agreements and to adopt the technical measures necessary to control the transfer of this type of information.

D) Choosing the basic structure of the technology contract

It is necessary to determine the contract’s basic structure and key aspects by taking into account the type of operation to be carried out (license, collaboration agreement, joint-venture etc).

For instance, the rights which are licensed, whether the license is exclusive or not, territory, consideration, scheme for improvements in the licensed technology, legislation etc.

E) Identifying and resolving legal issues

One of the key guidelines in negotiating is to achieve a mutually beneficial agreement. Therefore, each of the parties should establish the maximum and minimum objectives with regard to every contract’s issues.

F) Monitoring and control

The party which transfers the technology should control its use, as well as compliance with contractual obligations undertaken in the signed agreement.

It is also important to ensure uniformity in exploitation and quality, especially when third-party marketing is carried out through the use of trademarks which it owns.

For its part, the acquirer or receiver of the technology should verify effective transfer, ensuring that it receives all the knowledge necessary for manufacturing and marketing the technology, as well as for monitoring the provisions of the contract.

As a final recommendation, it is important to highlight the need for every technology transfer process to be managed by a multidisciplinary team with a technical/legal profile.

Carmen Sánchez-Puelles