Technology Transfer Agreements - International Trade Law

Technology Transfer Agreements and its regulations in Ghana and related laws

1. TECHNOLOGY
TRANSFER
AGREEMENTS (TTA)
16.04.2018
MUC 2016 B
CLASS PRESENTATION

2. TTA DEFINED
•Technology Transfer Arrangement refers to contracts or agreements,
including renewals thereof, involving the transfer of systematic
knowledge for the manufacture of a product, the application of a
process, or rendering of a service including management contracts;
and the transfer, assignment or licensing of all forms of intellectual
property rights, including licensing of computer software except
computer software developed for mass market. (1)
•Technology Transfer Agreement, backed by law, with GIPC as the
regulator, are a relationship between an indigenous company and its
parent company abroad or external company, where there is a
provision of some service from the external company to its local
subsidiary in Ghana (2)
1.https://www.ipophil.gov.ph/services/ip-business2/technology-transfer-arrangement Accessed 16.04.2019
2.https://www.ghanaweb.com/GhanaHomePage/business/GIPC-gets-tough-on-Technology-Transfer-Agreement-638075# Accessed 16.04.2019

3. TTA DEFINED – ACT 865 s.43
•“technology transfer agreement” means an agreement with an enterprise
which has a duration of not less than eighteen months and which involves
—
•the assignment, sale and licensing of all forms of industrial property, except
trademarks, service marks and trade names when they are not part of transfer of
technology;
•the provision of technical expertise in the form of feasibility studies, plans,
diagrams, models, instructions, guides, formulae, basic or detailed engineering
designs, specifications and equipment for training, services involving technical
advisory and managerial personnel and personnel training;
•the provision of technological knowledge necessary for the installation, operation
and functioning of the plant and equipment, and turnkey projects; and
•the provision of technological knowledge necessary to acquire, install and use
machinery, equipment, intermediate goods or raw materials which have been
acquired by purchase, lease or other means; (3)
3. GHANA INVESTMENT PROMOTION CENTRE ACT, 2013 (Act 865)

4. CATEGORIES BY ACT 865
•Agreements covering Industrial Property Rights
•These Agreements generally relate to the assignment, sale and licensing of all forms
of industrial property such as licenses, trademarks, trade names, service marks,
utility models and patents.
•Agreements for the provision Technical Services/Assistance
•These Agreements generally relate to the provision of technical expertise e.g.
feasibility studies, plans diagrams, models instructions, guides or formulae.
•Agreements covering the transfer Know-How
•These agreements generally relate to the provision of technological knowledge
necessary to acquire, install and use machinery, equipment, intermediate goods or
raw materials which have been acquired by purchase, lease or other means.
•Agreements for the provision of Management Services
•These Agreements generally cover services related to the day-to-day management of
a Ghanaian enterprise by a foreign enterprise. (4)
4. http://www.mondaq.com/x/743718/Trademark/Technology+Transfer+Administration+In+Ghana Accessed on 16.04.2019

5. IMPORTANCE

6. REGULATION
The Ghana Investment Promotion Centre Act, 2013 (Act
865)
•Registration & maintain records of all TTA - Ss.4, 37(2),(3)
•Review TTAs before registration s.37 (4)(a) and
•Monitor compliance after registration s.37 (4)(b)
•Renew TTAs working with relevant regulator of the centre s.37(6)
•Further regulations by other regulations in force especially s.37 (7)
•The Technology Transfer Regulations, 1992 (L.I. 1547).
•NOTE:
•TTA registered with the GIPC before the commencement of this Act is deemed to
be registered with the Centre established by this Act s.44

7. REGULATION
The Technology Transfer Regulations, 1992 (L.I. 1547)
•The Minister in consultation with the Board may by legislative
instrument make Regulations to prescribe for matters relating to
technology transfer;
• The Technology Transfer Regulations, 1992 (L.I. 1547)

8. Limitations/Constraints on Prospective
Applicants
•The Agreement must have duration of not less than eighteen (18)
months and not more than ten (10) years - Act 865 and L.I. 1547 S. 9
•For renewal applications, the duration of a TTA must not exceed five
(5) years S.9
•The Transferee under a technology transfer agreement is obliged to
provide training on the services being provided to the Transferee.
•If the technology is available

9. Unenforceable Clause LI 1547 - S4
•(a) clauses transferring technology which is freely and easily available in Ghana;
•(b) clauses which restrict the volume of production or the sale of the transferee’s products in the transferee’s country; or
•(c) clauses which completely prohibit the exportation of the transferee’s products or the right to export to specific geographical
areas other than to areas where the transferor has previously granted exclusive rights to third parties; or
•(d) clauses which require—
•(i) the transferee to export exclusively through the transferor or on unfavorable terms; or
•(ii) the transferor’s prior permission before any export transaction is made; or
•(iii) the transferee to a pay additional royalty on export sales; or
•(e) clauses which impose an obligation on the transferee to acquire or procure its inputs including equipment, tools, parts, raw
materials or intermediate products exclusively from the transferor or any other person or a specific source; except where such
inputs are not commercially available elsewhere or such inputs are special to the technology supplied or are required to meet the
specifications of products to be produced either under license or trademark; or
•(f) clauses which impose on the transferee an obligation to employ personnel to be appointed by the transferor whose
remunerations shall be provided by the transferee, unless in the opinion of the Centre the obligation is considered indispensable,
taking into account the work to be performed by the personnel in respect of the transferred technology; the remuneration for it
compares favorably with what prevails in the international market for similar services to be performed by the personnel and in
any such case the provision of the services is supported by a properly drawn-up Management or Technical Services Agreement; or
•(g) clauses which provide for the obligatory transfer by the transferee of improvements or innovations introduced or developed,
or patents acquired by the transferee in respect of the licensed technology to the transferor, except that such a clause, excluding
patents acquired by transferee, may be permissible where they are mutual or reciprocal; or (h) clauses which require payment for
patent and other industrial property rights after their expiration, termination or invalidation; or

10. Unenforceable Clause LI 1547 - S4
•(i) clauses which prohibit the manufacture or sale or both of products based on the technology
transferred on the expiration of the agreement, or prohibit the use of licensed technical know-
how acquired from the use of the licensed technology after the expiry of the agreement; or
•(j) clauses which are designed to prevent the transferee from contesting or assisting in
determining, either administratively or by means of judicial proceedings, the validity of industrial
property rights claimed or secured in Ghana by the transferor; or
•(k) clauses which restrict R & D (research and development) activities of the transferee to
improve and adapt the licensed technology or restrict the transferee access to continue
improvements in techniques and processes related to the licensed technology ; or
•(l) clauses which forbid the use by the transferee of complementary technologies; prevent the
manufacture of products different from those covered by the agreement or prevent the
manufacture of products similar to those covered by the technology transfer agreement; or
•(m) clauses which require the consent of the transferor before any modifications to products,
processes or plants can be effected by the transferee or which impose on the transferee
obligations to introduce unnecessary designs; except where the licensed technology is used to
manufacture specific products under a license or trademark; or

11. Unenforceable Clause LI 1547 - S4
•(n) clauses which limit the scope, volume of production or the sale or
resale prices of the products manufactured by the transferee; or
•(o) clauses which impose on the transferee an obligation to sell all its
manufactured products to the transferor at a price fixed by the latter or to
any other person or enterprise designated by the transferor; except that
this provision shall not apply where—
•(i) the transferee is engaged exclusively in the manufacture of intermediate
products, parts or components for subsequent transformation, assembly or finishing
by the transferor, and the transferor is the sole potential buyer of such intermediate
goods; or
•(ii) the requirement is related exclusively to certain export markets; or
•(iii) the transferor can prove that it possess an adequate distribution system or
enjoys sufficient prestige in the trade to be able to market the products covered by
the agreement more efficiently than the transferee. Provided always that the
transferee shall at all times not be coerced into any such transaction.

12. Key Provisions
•Regulation 3—No Restriction on Registration. Subject to the other
provisions of these Regulations, no restrictions shall be imposed on
the registration of a technology transfer agreement.
•Regulation 8—Confidentiality Obligation of Transferee.
•(1) The transferee shall keep the licensed know-how confidential and
use it only for its own production
•during and after the expiration of the agreement.

13. Key Provisions
•(2) The transferee shall not, except with the consent of the transferor and
on terms acceptable to both
•parties, sub-license the licensed know-how.
•Regulation 9—Duration of Agreement. The duration of a technology
transfer agreement shall be for a period not exceeding ten years, but an
agreement may be renewed where it is considered desirable by the parties
for subsequent terms each not exceeding five years.
•Regulation 10—Applicable Law. Technology transfer agreements made
under the Code or regulations made thereunder shall be governed by the
laws of Ghana
•Regulation 14—Payment for Technology. Royalty in respect of know-how
patents and other industrial property rights shall range from 0% to 6% of
net sales of the technology recipient.

14. CHALENGES
•Delays in submission to GIPC,
•Constrains to quick review of TTA by the Centre, and
•The requirement of second regulatory approval for renewal for TTA

15. Failure to Comply
•Failure to register a TTA with the GIPC is a breach of the GIPC Act
2013, Act 865 and L.I 1547 which was liable to a summary conviction
(5)
•a company which fails to register its TTA with the GIPC cannot legally
transfer fees and charges to the Transferor in relation to technology
transferred.
•The GIPC may also suspend, cancel or revoke the registration and
advise Bank of Ghana to suspend any remittance and incentives
granted to the company among others if you fail to register (6)
5. http://www.gipcghana.com/press-and-media/618-we-are-ready-to-partner-you-gipc-tells-stakeholders-in-compliance-to-tta-s-technology-transfer-agreement.html Accessed 16.04.2019
6. Mrs. Naa Lamle Orleans-Lindsay, We Are Ready To Partner You’- GIPC Engages on TTA’s (Technology Transfer Agreement), www.gipcghana.com Accessed 16.04.2019

16. Thank You