Technology Transfer Legal and Transactional Issues 5.5.2015

Lecture within the framework of Cost Program by the Aristotle University of Thessaloniki

1. Technology Transfer Transactions The commercial & entrepreneurial exploitation of Research Legal Issues, Procedures, Tools Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value ( www.add2value.com

2. Defining the required Technology Transfer Transactions Commercialization Strategy Business Strategy vs Commercialization Strategy: The particularities of the path from Research to Market What is the role of the “Market” in Technology Transfer ; Is it the Market that set the Research Challenges or does Research open up new “Markets” ? (market or technology trends?) Academic Target: Peer recognition Applied research target: Introduction of new technology with potential diffusion of use Commercialization target: Getting into customers Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

3. The essential elements of the Commercialization Strategy From research result to product User and Beneficiaries : Converting a research result to a product Market Value : Economic value as a main driver Market competition : Immediate, potential and “hidden” competition Customers : (a) Firms as customers, (b) Collaborating with firms for the entry to new customer markets Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

4. Technology Transfer Transactions I Contracts of collaboration between firms and researchers Potential Forms of Collaboration - Joint research – collaborative products -Research mandates - Consulting contracts Production support Market support Framework contracts Balancing the roles among firms and researchers – Particularities of each type of contract Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

5. Technology Transfer Transactions II Licensing Intellectual Property Rights– Exploitation of IPR Intellectual Property Rights - The wide spectrum: Patents, Copyright, Designs, Trade secrets-know how, Plant varieties etc The IPR owner – the professor’s privilege Exploitation of Property Rights: What does exploitation mean? What are the limitations set to the researcher? What are the opportunities? Licencing of IPR Valuation of IPR – The time factor Main terms Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

6. Role of University in Technology Transfer Transaction S pecific conditions and restrictions Contracts concluded by Researcher or University ; Potential alternatives The consequences of the « professor’s privilege » ( Who is the IPR owner?) Contracts by the Researchers Defining the subject -matter Main terms Contracts by the University - Defining the subject - matter - Terms and conditions : Restrictions for selection of collaboration partner ; Application of public procurement rules? Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

7. Technology Transfer Entities – Vehicles I Creating a spin off with participation of University Main challenges Activity Share Capital and Funding Administration The University as shareholder Valuation of shareholding -- Shareholder rights Legal framework Participation of professors in the administration Tax, Accounting and legal framework Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

8. Technology Transfer Entities - Vehicles II Setting up a Start Up by Researchers Potential Company Structure Participation of researchers and third parties Provisional researcher-only shareholding Collaboration with University Valuation and Valorisation of fee paid to University Main challenges Researcher as Entrepreneur Management Team Legal Framework Restrictions **Balancing within the University ecosystem Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

9. Technology Transfer Entities - Vehicles III Joint Ventures with firms - Common company Alternative Joint Venture Structures Main Issues Participation of researchers and firm - Shareholder Participation of University Bonds and shareholding by firm Valuation Researcher as Entrepreneur Management Team Legal Framework Restrictions Main challenges The next steps – Lifecycle of project **Balancing within the University ecosystem Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

10. Financing Technology Transfer Transactions What defines the options? Financing a venture of research commercialization Research programs and State Support Investors Smart money by firms as investors + collaborators Lending Financing a new Entity Investors: Venture Capitals, Angel Investors, Smart Money EU Programs Lending Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

11. Contracts as technology transfe r transactions tool Drafting contracts Different Legal Systems: The anglo-saxon legal system vs Continental Europe system Balancing interests -Commitments – Value - Expectations The architecture of Rights and Obligations Main obligations and commitments Breach of obligations Termination of contracts Terminology and Content accuracy Important elements for contractual terms drafting Annexes and Definitions - A complex Set of Agreements MOUs , Letters of Intent, Multiple contracts Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value

12. Facing the legal issues in Technology Transfer Significant Challenges Understanding of Institutional Framework Commercial strategy and the law Organization and Support – Advisors The right mix between Flexibility and Protection Technology Transfer Transactions (tools, procedures, legal issues) by Faye ORFANOU, Lawyer – Technology Transfer Coordinator, founding partner Add-2-Value