| name | technology-transfer-agreement |
| title | Technology Transfer Agreement |
| description | Drafts Technology Transfer Agreements governing IP rights, license grants, royalties, and commercialization obligations between licensors and licensees. Triggers when drafting technology licenses, university tech transfer deals, IP licensing, or know-how transfers in biotech, software, or clean energy sectors. |
| author | CaseMark |
| author_url | https://github.com/CaseMark/skills/tree/main/skills/legal/technology-transfer-agreement |
| license | Apache-2.0 |
| version | 0.1.0 |
| execution_mode | open |
| jurisdiction | general |
| practice | ip |
| language | en |
| tags | ["agreement","drafting","transactional"] |
Technology Transfer Agreement
Structures IP rights, commercialization obligations, and financial terms between licensor and licensee per WIPO guidelines.
Prerequisites
Gather before drafting:
- Parties — legal names, jurisdictions, principal places of business
- Technology — patents (granted/pending), trade secrets, know-how, technical data
- Deal terms — exclusivity, territory, field of use, financial structure (upfront fees, royalties, milestones, equity)
- Existing agreements — prior NDAs, term sheets, existing license obligations
- Regulatory context — export controls, industry regulations (FDA, EPA, etc.)
Agreement Sections
Draft these sections in order:
| # | Section | Key Elements |
|---|
| 1 | Parties & Recitals | Legal names, jurisdictions, transfer context, ownership basis, commercialization intent |
| 2 | Definitions | See Required Definitions below |
| 3 | Grant of Rights | Exclusivity type; field of use; territory; duration; sublicensing |
| 4 | Financial Terms | Upfront fees, royalties, milestones, minimum annual royalties, equity, payment mechanics |
| 5 | IP Ownership & Improvements | Licensor IP retention; improvement ownership; grant-back licenses; inventorship procedures |
| 6 | Confidentiality | Scope; use restrictions; permitted disclosures; duration; NDA consistency |
| 7 | Representations & Warranties | Licensor: ownership, authority, non-infringement (to knowledge). Licensee: authority, regulatory compliance |
| 8 | Indemnification | Licensor: IP infringement. Licensee: commercialization claims. Notice/defense/settlement procedures |
| 9 | Term & Termination | Initial term, renewal, breach cure, bankruptcy, wind-down, surviving obligations |
| 10 | Diligence & Regulatory | Milestones, commercialization timelines, regulatory approvals, export compliance, failure consequences |
| 11 | Dispute Resolution | Governing law, escalation: negotiation → mediation → arbitration/litigation |
