It is a contract which provides that information exchanged in the context of the negotiation or execution of the contract must not be transmitted to third parties by one party without the agreement of the other party.
It is sometimes necessary to communicate one’s invention or confidential information to potential partners or investors before filing a patent application. In such cases it is possible to prevent the disclosure of the secret by having the recipients of the information sign a confidentiality agreement. Thus, this type of agreement is essential in the initial stages of the genesis of an invention, before a patent is filed, or for secrets intended to remain confidential at all times, for example an internal manufacturing process.
Unlike a patent, a confidentiality agreement does not confer a monopoly, but makes it possible to sue the receiver of the confidential information in the event of improper disclosure, and to claim compensation for the losses incurred. The amount of damages, fixed by the judge, may be difficult to prove in case of breach of the agreement. Therefore, it is advisable to insert a penalty clause in the contract, which will allow for an automatic amount to be received in case of breach of the agreement.
The model confidentiality agreement (NDA) to download illustrates the structure of a typical confidentiality agreement. It is given here as an example only; we encourage you to contact us before using it to check whether it is suitable for your situation.
The licence contract is the contract by which the licensor grants the licensee the right to use and exploit an intangible asset industrially or commercially in return for remuneration. Unlike an assignment contract, the holder of the IPRs retains ownership of them. In other words, there is no change of ownership or transfer of ownership, the holder only assigns the rights of use and commercial exploitation.
We can distinguish between an exclusive licence and a simple licence. In the first case the licensor refrains from granting rights of use or exploitation of IPRs to third parties. It should be emphasised that he undertakes to refrain from using or exploiting the intangible property himself (e.g. commercially exploiting the invention). A simple licence means that the licensor reserves the right to use and exploit the intangible property himself and/or to grant this right to third parties.
Contract for the assignment of IP rights
By the assignment contract the assignor assigns to the assignee his right to the intangible property. Assignment means the transfer of IPRs. According to Swiss law (Art. 33 para. 2bis PatA) the written form is required for the transfer of a patent or a patent application but not for the transfer of the patent right (Art. 3 PatA). The right to a patent means the right to take all necessary steps to obtain patent protection.
Non-practitioners often confuse licensing with assignment. We can illustrate the difference between the two contracts with the example of a lease which is similar to a licence and a sale which can be synonymous with an assignment.
Research and development (R&D) contract
The research contract is the contract by which the client entrusts the researcher(s) to carry out research on a scientific and/or technical problem and to make the results of his work available to him.
The purpose of the development contract is the development of a product, tool or other technical instrument.
In Switzerland, the R&D contract is very widespread in the context of collaboration between universities (such as EPFL, HES-Arc, etc.) and industrial partners who finance a research project. Thus, it is very important to settle in this contract the question of the transfer of intellectual property rights on the results of a project, the question of the use of rights on the intangible property of each party to the contract prior to the collaboration, and the possibility of scientific publication on the results.
Innovation often thrives at the boundaries of different disciplines and distinct (organizational) cultures. A well-defined strategic vision, clarity on expectations and legal issues very early on are essential for the successful exploitation of innovative outputs.
P&TS’s long-standing and international experience with R&D projects equips us perfectly to define and negotiate a suitable legal frame for translating collaborative research results into a commercial offering. Among our team of IP consultants, we count an in-house expert in Technology Transfer, who is an Innosuisse Special Coach for Tech Transfer and a SwiTT business member.
P&TS enjoys a legitimately recognized position amongst universities and industrial partners alike, which enables us to facilitate the negotiation of agreements in compliance with the relevant legal framework and in a straightforward, pragmatic manner.
We provide advice and support for partnerships between academia and industry as well as between start-ups and their strategic partners.
Collaborations between Industry and Higher Research Organizations
In the context of collaboration between industry and Higher Research Institutions it is important to seek agreement on ownership and access rights to the Intellectual Property (IP) prior to launching the project. As part of the negotiation of these rights, the respective contribution of the partners, i.e. funding and innovative input, as well as the needs and commercial intentions of both partners must be considered. Depending on these aspects, most agreements typically fall into the Funding/Sponsorship Agreement, the Research Collaboration, the IP Agreement or into the Service Agreement category.
However, each collaboration has its particularities and agreements need to be drafted to suit the distinct requirements and constraints of each project. At P&TS we tailor the right type of agreement to suit the project and support our clients in the negotiation of appropriate terms.
P&TS has significant experience in working with and for industry as well as research institutions. We are very familiar with the different organizational cultures and are particularly delighted to count numerous Swiss universities and universities of applied sciences amongst our clients.
The positive impact of joining the expertise in multi-party consortia is widely recognized and promoted though funding programs available at EU as well as at national levels (e.g. National Thematic Networks (NTN) administered by Innosuisse).
Generally speaking, the funding body sets forth a legal basis governing the awarded consortium project. As part of a separate Consortium Agreement the members of the consortium agree between themselves on specific terms pertaining to management, ownership, and access rights to results, as well as to their commercialization. Due to the number of different partners entertaining various expectations, needs and interests, the negotiation of these agreements can at times prove challenging.
A leading house in a consortium needs to pre-define certain arrangements (such as confidentiality obligations, IP and commercial rights, code of conduct) between the partners, in particular, if the consortium project is not governed by strict regulations imposed by the funding body.
Depending on our clients’ specific needs P&TS assists in establishing a solid legal framework for a consortium and we support the negotiation of the Consortium Agreement.
Creating a new legal entity from a research group or based on IP generated at a public research institution comes with its own challenges, not least the change in roles of the individuals involved. Researchers may now have to defend the interests of the Spin-off. Technology Transfer personnel of the university, who assisted in the preparation of the project, are now suddenly on the other side of the negotiation table.
While various general practices exist in the different institutions, specific agreements are usually negotiated on a case by case basis. Here, clear communication of the Spin-off’s business needs in terms of IP and its realistic financial capability in terms of royalty payments is key to arriving at an agreement that works in the long run.
P&TS’s support in negotiating Spin-off licences aims to enable commercial success in the medium to long term to the benefit of both sides. We accompany our clients from the preparation of a term sheet to the signature of the licence and beyond.
IP and partnering strategy for Start-ups
A Start-up is no one-stop-shop but must select and engage with a number of business partners, if it wants to reach a sufficiently large market in order to grow. A partnering strategy should always be closely aligned with the Start-up’s IP strategy, as agreements need to be negotiated accordingly. If the IP is not managed diligently to foster the overall vision of the company, early mistakes in partnering agreements may prevent the Start-up from using its IP to achieve its objectives.
Over the years P&TS has advised more than 500 start-up ventures in all aspects IP and Technology Transfer. With the view to assist our start-up clients to build their IP portfolio, we offer advice on IP strategy in light of the company’s vision and on capturing strategically relevant IP generated in house as well as in the context of partnerships.
Negotiation of partnership agreements
During the negotiation of partnership agreements, we put a special emphasis on the terms relating to IP and confidentiality, to ensure that these terms support our client’s business needs in the long run. We assist in defining a suitable arrangement for partnership agreements, which sufficiently addresses the interests of both sides, as this is the key to a successful partnership.
Feel free to contact us with any particular requests or needs, even if they do not exactly match the above-mentioned categories. We will consider any Technology Transfer-related requests and see how we can help you.
Oppositions and conflicts
Thanks to our considerable activity in technology and patent intelligence, we are frequently lead to participate in opposition procedures to have the patents of competitors invalidated or for defending our clients’ patents. We are entitled to represent clients for all the steps in connection with an opposition or appeals procedure in front of the European Patent Office in Munich.
It is possible to initiate an action very simply against a pending patent application filed by a competitor. The European Patent Convention affords the possibility to anyone of filing third party observations on a European patent application (Article 115 EPC), i.e. to communicate arguments to the Patent Office or to file new documents, e.g. documents that have not been cited in the search report, or proof that the challenged application does not fulfill the requirements of the EPC. No official fee is required for filing third party observations, which incidentally can also be filed anonymously. The party filing observations under Article 115 EPC is however not party to the procedure, which constitutes one of the main restrictions of this system. The arguments and documents filed will then be discussed directly between the applicant and the examining division, without the third party being able to participate in these discussions. The applicant is thus in a favorable position for attempting to convince the examiner.
Apart from third party observations, the EPC provides for an opposition procedure allowing third parties to have a granted patent invalidated. The opposition must be in writing and filed within a nine months’ deadline after grant of the patent upon payment of an official fee. Grounds for the opposition must be provided. About 6% of granted patents are the object of an opposition (status in 1999); of the opposed patents, a third is totally invalidated, a third maintained in a modified form and a third maintained without amendments. The average duration of an opposition procedure is at least two years. A subsequent appeal can extend the procedure by another two years. Thanks to our ability in prior art searches, to our knowledge of the internal workings of the European Patent Office and to the experience accumulated in this kind of procedure, we are particularly competent for managing from end to end highly complex opposition procedures.
Infringement actions; patent nullity actions
After grant, once the opposition deadline has lapsed, the only way of obtaining the revocation of a patent is to bring the matter in front of the courts, who are also in sole position to impose punishment on infringers. We assist you in evaluating the costs, benefits and risks before initiating a procedure and advise you as to the choice of courts in front of which to bring the action (choice of country or canton), we help you to collect the necessary proofs and documents, we recommend the best attorneys in each jurisdiction and act as technical experts to direct or back the entire litigation procedure. Thanks to our experience in conducting negotiations and in licensing matters, we can also help you to reach an amicable settlement before the final judgment.
Our company name P&TS is an acronym for Patents & Technology Surveys because from the very start, we decided to combine these two aspects. This puts us in a unique position for preparing IP audits. The reports prepared by P&TS aim to analyse an existing patent portfolio to answer mainly the following questions:
- Can the owner’s patents/patent applications be defended? What are the risks of them becoming invalidated?
- Can these patents/patent applications be easily circumvented?
- Are the patents/patent applications aligned with the owner’s business plan and commercial strategy? What advantage do they afford?
- Do they effectively protect the owner’s core business?
- Is the choice of countries in which the patents have been filed appropriate?
- Is a company at risk of being attacked for infringing third party patents?
These P&TS audit reports are useful notably for helping companies to identify their needs and to define priorities in establishing an IP policy adapted to their budget and ambitions. Intellectual property due diligence reports are also often provided for investors and venture capitalists and during mergers or acquisition of companies.
The P&TS audits usually begin with an inventory of the intellectual capital of the company in question and of the IP titles it possibly already owns. We then check the quality of this portfolio and whether it is aligned with the company’s business strategy, and compare it quantitatively and qualitatively to that of competitors in the same domain.
Discussions with R&D managers and product managers are then organised to examine the company’s products that have the potential of being better protected, to assess the risk of these products being attacked by third parties and to identify sources of waste.
A report is then produced that clearly identifies the existing risks and puts forward short and longer term suggestions for improving the efficiency of investments in IP matters.
IP roadmaps make it possible to define an intellectual property strategy in collaboration with a company or start-up. This involves understanding the company’s business plan, conducting a panoramic search of patent databases to understand the competitive context, and then proposing an intellectual property strategy to support the company’s business plan and strategic vision.
We have extensive experience in this field and have completed more than 400 IP roadmaps in 10 years for start-ups, including as experts for CTI Startup / Innosuisse. 400 companies we visited, interviewed and examined from all angles to propose an intellectual property strategy adapted to their needs and ambitions. Indeed, for start-ups even more than for established companies, efficient management of time and money resources is essential to build a solid patent portfolio, convince investors, avoid problems of freedom of exploitation, and create visibility.