ICOSA assists its clients in the drafting and negotiation of licensing, transfer, collaboration and co-ownership agreements, as well as know-how transfer and consortium agreements.
ICOSA negotiates and drafts on behalf of its clients license agreements for Patents, Know-How, Designs & Models and Trademarks. A license agreement is a contract by which the owner of the right grants to a third party, in whole or in part, a right of exploitation with in return the payment of fixed price and/or royalties on the turnover.
The assignment is a transfer of ownership. It is often equated with a sales contract. In France, the assignment of a non-patented invention, or of a patent application filed for less than one year, must be associated with the assignment of the right of priority. A French specificity that should be included in international contracts involving a French party.
Innovation is increasingly the result of partnerships, open innovation and encounters from different technologies. The parties agree to pool their knowledge and skills, but must also agree on the exploitation of future results. In the digital age, these contracts take on considerable importance.
Collaborations can result, when the contributions of the parties are equivalent, from filing patents in co-ownership. In this situation, each of the co-owners can exploit the invention. But in French law, the co-owner who exploits must compensate the co-owner who does not operate.
Transfer of know-how
The transfer of know-how is primarily a transfer of knowledge or a transfer of skills. It is also the communication of a secret. Indeed, know-how is defined as a set of practical information that is: i) secret, ii) substantial and iii) identified. The purpose of the contracts is to transfer the know-how in complete secrecy.
Consortium agreements are agreements that include at least three parts, often from different states. For example, in all research and innovation projects funded under Horizon 2020, called multi-beneficiary projects, the consortium agreement is a mandatory document. From the freely available models, the parties must agree on what they bring and what they hope to emerge from the consortium.
Intellectual property clauses in contracts of employment, service or consultancy
An important aspect for the company is to ensure that the services it entrusts and finances will belong to it after the research or development. In employment contracts, issues of additional remuneration of inventors are discussed. The question of ownership of the invention by the corporate officer or the external provider must be managed quickly.