A technology transfer agreement moves technology, whether patents, know-how or software, from one party to another, typically in a collaboration, a spin-out or a licensing deal. The hard part is doing it without handing over more than you intended or losing control of the parts that give you your edge.
The first job is to be precise about the asset. Patents are registered, defined by their claims, and easy to identify. Know-how is unregistered technical knowledge that lives in documents, processes and people, and it has to be described carefully to be transferable. Software sits between the two, protected by copyright and often by trade secrets in its source. Each is transferred differently, and a single agreement often has to handle all three at once.
In any collaboration, the cleanest line to draw is between background IP, which each party brings to the table, and foreground IP, which is created during the project. The agreement should record who owns each, and who may use it afterwards and for what. Getting this wrong is the most common reason joint projects end in dispute, because neither side can later prove what it brought versus what was created together.
Where the value is in know-how rather than patents, confidentiality is the protection. The recipient must be bound to keep the information secret, use it only for the agreed purpose, and apply real security measures, because trade-secret protection depends on the owner taking reasonable steps to keep the information confidential. This connects to protecting software IP where source code is involved.
Some technology cannot be transferred freely across borders. Dual-use items, certain software and encryption, and defence-related technology are subject to export controls, and transferring them without the right authorisation is a serious matter. Check the regulatory position before the technology moves, not after.
Finally, decide whether the deal is an assignment (ownership transfers, usually for a lump sum) or a licence (ownership stays, use is granted, usually for royalties). The choice shapes both the price and the long-term control, and the licensing mechanics are covered in our note on licensing agreements.
Technology transfer is part of our patent and technology licensing work, alongside patents and, for datasets, data licensing and data sharing, within the wider commercial contracts and transactions picture. The map of commercial agreements gives the context, and drafting runs through our Contract Studio and Clause Library and Risk Review technology.
It has to be captured first. A transfer of know-how usually includes documentation, training and a period of technical support, so the recipient can actually use it. The agreement should specify what will be handed over and how.
Whatever the agreement says. If it is silent, you may have no rights to improvements built on your own technology. Address ownership of improvements and grant-backs explicitly at the outset.
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