ICC Model International Transfer of Technology Contract

As technology and intellectual property rights become increasingly important in today’s international business community, more and more companies across the globe are concluding transactions to transfer technology among business entities.  Recognizing the need to provide the marketplace with assistance on this highly technical subject, the International Chamber of Commerce has produced the ICC Model International Transfer of Technology Contract. 

While the term “transfer of technology” may cover a variety of situations, ranging from patent and/or know-how licenses to more complex dealings involving the supply of technical assistance or equipment, this model covers the situation where a manufacturer licenses a package of information and industrial property rights to a licensee company so that the licensee can also manufacture the products, using the licensor’s technology.

Model International Transfer of Technology Contract is designed for use by non-specialists in the area who are seeking reliable guidance and an adaptable, balanced contractual framework.  Produced by a group of subject-matter experts of the ICC Commission on Commercial Law and Practice, the model distills the relevant principles across industries and geographies into an accessible tool for business people and their advisors.

Table of Contents

Art.  1    Definitions
Art.  2    Good Faith and fair dealing
Art.  3    Entry into force of the Contract
Art.  4    Grant of rights and licences
Art.  5    Territory and competition
Art.  6    Obligations of Licensor
Art.  7    Obligations of Licencee regarding manufacturing of Products
Art.  8    Supply of Parts and Components and Products between the parties
Art.  9    Payments
Art. 10   Licensor’s warranties
Art. 11   Limitation of liabilities for damages
Art. 12   Ownership of Licenced Technology, third party rights infringement
Art. 13   Regulatory matters and product liability
Art. 14   Further development, improvements and Successor Products
Art. 15   Confidential Information – Force Majeure – Hardship
Art. 16   Term and termination
Art. 17   Resolution of disputes
Art. 18   Applicable law
Art. 19   Tax

Foreword

The transfer of technology is an increasingly important feature of commercial transactions, reflecting the increasing importance of intellectual property in the modern knowledge economy.  Business from all sectors, large and small, find themselves negotiating deals involving technology transfer, often across national borders.  In order to provide businesses with an accessible resource for a subset of technology transfer transactions, the International Chamber of Commerce has prepared this model International Technology Transfer Contract.

Designed for use by non-specialists in the area who are seeking reliable guidance and an adaptable contractual framework, this model covers situations where a company, which itself manufactures certain products, licenses to another company a global package of information and intellectual property rights in order to put the licensee in the condition to manufacture the products using the licensor’s technology.  As with existing ICC model contracts, the model seeks to balance the interests of the licensor and licensee across a range of industries, and provides comprehensive notes and guidance regarding issues requiring consideration by the parties.

This is the latest in a series of successful ICC model contracts prepared by a dedicated Task Force under the auspices of the ICC’s Commission on Commercial Law and Practice, chaired by Professor Fabio Bortolotti (Italy).  The model has benefited from the active participation of the Chair, Mr. Bortolotti, the Rapporteurs, Jacques Beglinger (Switzerland) and Mark Reutter (Switzerland), and the following Task Force members: Gerhard Aulmich (Germany); Thomas Wilhelm Buehlmeyer (Germany); AudeGazet- Talvande (France); Didier Ferrier (France); Vladislav Kuvshinov (Russia); Lauri Railas (Finland); Gonçalo Moreiro Rato (Portugal); Jean-François Serrier (Belgium); Oliver Vaes (Belgium); Marco Venturello (Italy); René Marcel von Samson-Himmelstjerna Germany); and Jan Pieter Witsen Elias (The Netherlands).