Contracting for technology transfer: patents, know-how and IP bundles

Dr. Catalina Martinez, Institute of Public Goods and Policies of the Spanish Research Council (CSIC-IPP)

Research has shown that patents encourage the development of technology markets and facilitate the division of innovative labor across firms and sectors. By reducing informational asymmetries and lowering the cost of transactions, patents allow partners to contract around legally protected pieces of knowledge and contribute to making technology markets more fluent and to improve the enforceability of transactions. In contrast, the transfer of know-how, which is critical to the successful utilization of the transferred technology notably in developing and emerging countries, typically raises important contractual hazards and results in incomplete contracts. The aim of this study is to identify factors related to the explicit inclusion of know-how transfer in patent licensing agreements, as a way to alleviate those contractual hazards. We examine under which conditions – contractual, sectoral and technological- such technology packages exist and evaluate the idea that the inclusion of know-how transfer in patent licensing contracts is related to bundling of intellectual and commercial assets (trademarks) especially in the case of product innovations, and examine the joint incidence of know-how, IPR bundling and exclusivity. Since firms can protect different aspects of the same invention with different types of intellectual property rights through “IPR bundling” strategies (e.g. combining patents, designs, trademarks), we examine if technology packages involving tacit knowledge and IP bundles are related to broader partnership strategies in the exploitation of innovations than stand-alone patent licensing agreements. We investigate these questions using official data on technology contracts registered before the Department of Technology Transfer of the National Institute of Intellectual Property (INPI) in Brazil between 1996 and 2012, and complement it with information from PATSTAT and other sources.

About the speaker
Catalina Martinez is permanent research fellow at the Institute of Public Goods and Policies of the Spanish Research Council (CSIC-IPP) in Madrid. She holds a PhD in Economics from the Universitat Autònoma de Barcelona and before joining CSIC, she worked for an economic consulting firm on competition policy in London and Brussels and at the OECD Directorate for Science, Technology and Industry in Paris for several years. Her research interests are related to science and innovation policy issues and indicators, with a focus on patenting strategies, markets for technology, science-industry linkages and academic inventors.

Venue: Conference Room

Date: 06 March 2014

Time: 12:30 - 13:30  CET