General

According to the observation report of the import and export data of Huacheng, in recent years, the market development has been changing constantly, and enterprises' innovative technology has gradually formed a boom. At the recently held seminar on IP risk measurement for enterprises going overseas, Kang Jian, vice president of intellectual property of Gakos Pharmaceutical Group, said that biotechnology enterprises should constantly improve their innovation ability and accumulate technology to greatly improve their product R&D ability, so that more and more technologies can be sold overseas.

New technology going to sea faces licensing transactions. According to the observation report of Huacheng Import and Export Data, in Kangjian's view, we can adopt a diversified trading model to seek better development. On the one hand, it can maximize the benefits. Both parties have their own resource advantages. For example, some enterprises do not have resources and teams at the time of start-up, so cooperation can make up for such disadvantages, thus reducing the risk of product development and making the product successfully listed. On the other hand, avoid tax and foreign capital access risks. Some enterprises simply put their technical content in tax havens, so they may face some tax problems when licensing. They need to consult professional tax experts to understand the relevant tax policies. If the initial design of the transaction structure is unreasonable or the diversified transaction mechanism is not adopted, the tax preference will not be available. In addition, some countries have restrictions on the access of foreign capital. From the beginning of negotiations between the two sides, the most reasonable transaction mechanism should be designed to avoid policy risks, Huacheng Import and Export Data Observation reported.

After confirming the external license, the technical due diligence shall be carried out first. Kang Jian believes that the focus of the investigation is on compliance and the characteristics of differentiated practices in different countries, which can specifically include the following: what types of patents, trademarks and trade secrets are available for core technologies; Whether the patent application is submitted and whether the submitted patent covers the core technology; The estimated expiration date of the patent, the geographical scope covered, and the maintenance of the authorized patent; Whether there are intellectual property rights of other competitive projects; Whether there is known infringement risk; Independence and integrity of ownership; Proof of ownership (such as whether there is a corresponding labor contract for the service invention, and if it is a license, the license agreement shall be provided); Whether there is any risk of inventor dispute; Whether the inventor transfer agreement, incentive policy, confidentiality agreement and non competition agreement have been signed; Whether there is any burden of rights (pledge, transfer, joint ownership, license), Huacheng Import and Export Data Observation Report.

Secondly, entering the stage of comprehensive due diligence, the biggest problem encountered is the risk of free implementation of the investigation. Once the patent application covering the candidate is retrieved through free investigation, the opinions given by the third-party lawyer employed by the licensee are generally conservative and neutral. The licensee often gives a "yellow light" or even a "red light". In this case, Chinese enterprises need to take the initiative to provide more analysis opinions, such as making response plans in advance before the risk of free implementation of the investigation occurs. In addition, if it is a defensive application without candidates, the number of countries entering is often small. If it is found early, structural transformation and differentiated layout can be carried out.

Finally, enter the formal agreement stage. In this stage, the most important thing is to confirm the scope of the licensed object, patent and proprietary technology, as well as limit the scope of the license (object, region, use, etc.). Sublicensing rights are also very important. The licensee can sub license to the licensor's competitors, so further agreements need to be made on the transfer of sub licensing rights. At the same time, reverse authorization also exists. If the licensor wants to retain part of the development rights, it can take back some rights to develop the domestic market through the reverse authorization agreement.

In the process of going to sea with new technologies, enterprises will encounter many risk points, which need us to effectively identify and control. Health suggests that enterprises can establish a reasonable internal organizational structure and compliance management system in advance; Based on the differences in patent examination practices among countries, we should make differentiated patent layout and defensive layout; Ensure the diversity of the licensing team; The investigation is carried out freely throughout the whole process, and local lawyers are invited to issue reports at important nodes; Concerned about the risks brought about by the development or change of laws and regulations, Huacheng's import and export data observation report.