General

According to the observation report of Huacheng Import and Export Data, in recent years, the market development has been constantly changing, and the enterprise innovation technology has gradually formed a boom. At the seminar on IP risk consideration of enterprises going abroad held a few days ago, Kang Jian, vice president of intellectual property of Jiakosi Pharmaceutical Group, said that biotech enterprises should continuously improve their innovation ability and accumulate technology to greatly improve their product R&D ability, so that more and more technologies can be exported overseas.

New technologies are facing licensing transactions. According to the report of Huacheng Import and Export Data Observation, in the view of Kangjian, we can adopt a diversified trading model to seek better development. On the one hand, it can maximize benefits. Both partners 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 launched. On the other hand, avoid tax and foreign capital access risks. Some enterprises simply put technical content in tax havens, so they may face some tax problems when licensing. They need to consult professional tax experts to understand relevant tax policies. If the design of the transaction structure is not reasonable or the diversified transaction mechanism is not adopted at the beginning, it will not be able to enjoy tax benefits. In addition, some countries have restrictions on the access of foreign capital. From the beginning of the 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, conduct technical due diligence first. Kang Jian believes that the focus of the investigation is on compliance and the characteristics of different countries' differentiated practices, which can include the following: what types of patents, trademarks and trade secrets are the core technologies; Whether to submit a patent application and whether the submitted patent covers the core technology; The estimated expiry 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; Certificate of ownership acquisition (such as whether there is a corresponding labor contract for the service invention, and if it is licensed, provide a license agreement, etc.); Whether there is the risk of inventor dispute; Whether to sign the inventor transfer agreement, incentive policy, confidentiality agreement and competition agreement; Whether there is an encumbrance (pledge, transfer, co-ownership, license), Huacheng Import and Export Data Observation Report.

Secondly, when entering the stage of comprehensive due diligence, the biggest problem encountered is the risk of free implementation of the investigation. Once the free implementation investigation has retrieved the patent application covering the candidate, the opinions of the third party lawyer employed by the licensee are usually 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 preparing a response plan in advance before the risk of free implementation of 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 differential 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, and limit the scope of the license (object, region, use, etc.). The sub-license right is also very important. The licensee can sub-license to the licensor's competitors. Therefore, further agreements need to be made on the transfer of the sub-license right. At the same time, there is also reverse licensing. If the licensor wants to retain part of the development rights, it can take back some rights to develop the domestic market through the agreement of reverse licensing.

In the process of launching new technologies, enterprises will encounter many risk points that need to be effectively identified and controlled. Health suggests that enterprises can establish a reasonable internal organizational structure and compliance management system in advance; Based on the differences in the practice of patent examination in different countries, make differentiated patent layout and defensive layout; Ensure the diversity of the licensing team; The free implementation of the investigation runs through the whole process, and local lawyers are employed to issue reports at important nodes; Pay attention to the risks brought by the development or change of laws and regulations, Huacheng Import and Export Data Observation Report.