Licensing & Tech Transfer

There are various means by which technology may be acquired such as: the undertaking of a businesses own research and development on its own or in collaboration; payment of an external party to undertake the research and development for a business; the purchasing of equipment from an external supplier; the provision of external assistance from external experts; and the purchasing or licensing of rights to technology from third parties.

Guy & Hinton has advised clients in the non-collaborative research and collaborative research areas with respect to management and preservation of intellectual and industrial property. We were commissioned by the Victorian Government to create an enhanced Chipskills agreement between La Trobe University, Students and Corporations for research projects in the area of microelectronics. This was a multi party agreement that was to provide for unencumbered corporate ownership of intellectual property developed by students in the course of their master’s programme, that was designed to stimulate corporate sponsorship and enhancement of business university cooperation and student employment opportunity.

Guy and Hinton regularly advises clients as to the purchase of equipment and installation of such equipment where the purchase may or may not involve enduring licensing arrangements due to the equipment or software incorporating intellectual property rights.

We also advise on sales and purchases of businesses that involve technology that is dependent upon the technical assistance of the vendor and its associated know-how, confidential information and/or trade secrets for its operation. The requirement for the agreement as to the nature and extent of technical assistance that will support the transition of ownership and operation of a business can be a key issue in the success of a business transaction.

Guy and Hinton regularly negotiates and draws licenses for parties involved in technology transactions. We advise our licensors of the various aspects associated with licensing in order to assist them to extract the best value from their technology, enter new markets and form rewarding business relationships with their licensees. We assist our licensees to negotiate and regulate their access to technology, access to improvements and entrance into new markets with limited up front investment, while minimising the risks of disputes associated with ongoing licensor relationships.