Agreements & IP Policy
Transactional Agreements (CDA / MTA)
Discussions with a third party
Because in most countries the patent right belongs to the first person to file, it is very important to maintain secrecy once a researcher thinks an invention has been made. From this point until the official date of filing a patent application, any disclosure of the invention can only take place if a “Confidential Disclosure Agreement” (CDA) has been signed by both parties. Executing a CDA is often the first step towards forming a partnership.
Transfer of material to a third party
Another type of agreement often handled by the TTO is a “Material Transfer Agreement” (MTA). Institutions like ours who handle biological material on a daily basis often need to acquire new materials and also share or monetize its own materials. Depending on the partner institution and the nature of the material, different previsions need to be taken, including from an IP perspective.
Innovation sometimes requires collaboration with an external entity, be it public or private, in order to transform an early-stage discovery into a real technology capable of benefitting patients. Institut Curie therefore enters into various collaborative agreements with industry, academia, and nonprofit organizations in order to facilitate innovation through the exchange and co-development of research materials, knowledge, and technologies. Although working together on a subject can present an otherwise unattainable acceleration in a selected field, again care needs to be taken so that all parties rights are pre-defined. The contract is therefore vetted by both partners prior to authentication in order to meet each party’s requirements.
To authorize a third party to use a patented technology, or know-how, licensing is a fundamental tool of the TTO. By transferring technologies to the private sector, a product can more quickly be developed and reach the public.
Licenses may be “exclusive” or “non-exclusive”. An exclusive licensee is the sole licensee for a given patent, and therefore it benefits almost as fully as if it were the owner. On the other hand, a non-exclusive licensee has to share the technology with all the other non-exclusive licensees. Licensees pay for the right to commercialize Institut Curie’s invention whilst its competitors are prohibited from making, using, importing or selling the licensed invention. Licensing terms need to be defined on a case by case basis and they may vary considerably. As with all legally binding agreements, special care needs to be taken when drawing up the terms.