Technology transfer contracts: types and valorization strategies

ITTBioMed by Edra and DLA Piper, with the support of Lendlease, MIND, and T-Factor, organized the event “Patents and Secrets: Technology Transfer in Life Sciences.” The main objective of the event was to promote fruitful exchange among experts in the biotech sector, aimed at consolidating its foundations in Italy and promoting the protection of industrial property and scientific know-how.

Present at the meeting was Chiara D’Onofrio, Trainee Lawyer at DLA Piper, who provided an essential overview of the importance and dynamics of technology transfer (tech transfer) between the public and private sectors. Tech transfer, she reminded, is “a set of activities aimed at the development, protection, and commercialization of technologies with the goal of promoting investments in the public sector and improving production in the private sector.” According to the expert, there are two main paths for technology transfer: “The open publication of inventions for the public domain and the protection of intellectual property rights for commercialization through licenses. The license can obviously be exclusive or non-exclusive,” she explained, indicating the flexibility in valorization methods for inventions. “Regarding research and development contracts, it is important to clearly define the object of the research and the financial commitment, also addressing the management of ownership of results and confidentiality. Regarding the negotiation of license contracts, it is a complex process that often begins with non-disclosure agreements and proceeds with pre-contractual due diligence to verify the legitimacy and status of intellectual property protection.” In conclusion, D’Onofrio emphasized the challenge of evaluating intellectual property rights and described variable compensation as a solution to align the needs of both parties: “Variable compensation allows for the best alignment of both parties’ needs,” she stated, highlighting the importance of establishing a fair agreement between licensor and licensee.