Technology transfer is often used as a synonym for patent and/or know-how licenses.

An intellectual property license agreement is an agreement between two or more parties whereby one party (the licensor) grants another party (the licensee) the right to commercialize one or more intellectual property rights owned by or licensed to the licensor.

Negotiating a technology transfer agreement can be a complex process, involving experts and expertise from a wide variety of backgrounds. This will be especially the case when the intellectual property right(s) that are the object of the agreement are strategic assets for at least one of the parties to the agreement, and the the commercial stakes are high.

In some of the transactions I was involved in, the intellectual property rights that were the object of the agreement were often the most important asset owned by the licensor, in which cases particular caution is advised.

When entering into a license agreement, it is important to consider a number of particularities which directly or indirectly relate to the transaction at hand. Below is a non-exhaustive list:

1. -Which intellectual property right is the object of the license agreement? Does it exist? For which countries has it been granted?
   

1. -What is the term of the agreement, and what are the post-expiration obligations?
   

1. -Which representations and warranties are given by the parties?
   

1. -Tax aspects
   

1. -Antitrust / competition law considerations