At the moment of obtaining a title of protection for intellectual property rights object its holder has the exclusive ownership of all rights to such an object. In case, if the owner is only the mastermind behind, but not an entrepreneur, developed for the benefit or usage of such IPRs reaching a qualitatively new level, when the author / patentee became unable or does not wish to organize their own commercial use of IPRs object in a certain area, he makes a decision to transfer all of the available proprietary rights or part of such rights to a third party.
In the reality of today's market of intellectual and industrial property rights in Ukraine, the most sensible way of transfer of property rights is the conclusion of a treaty (copyright, license or franchise agreement). Such contracts are a way to defend legitimate rights and interests of both the author/patentee and successor.
The main goals of the Parties in the preparation of the license agreement are:
- the introduction of the object of intellectual property into a market;
- make a profit;
- the promotion of scientific and technological progress;
- permission to legitimate uses of intellectual property in a selected area;
Under a licensing agreement (License Agreement) holder (the licensor) agrees to grant the right to use the protected trademark to the extent provided by the contract, to another person (the licensee), and the latter undertakes to make payments to the licensor specified in the contract, and (or) any other action under the contract.
Licensing has some specific features that must be taken into account when drawing up a licensing agreement. They are as follows:
- In addition to physical objects (tools, machines, tools, materials, etc.) in such transactions elements of intellectual labor are involved (the "know-how", technical knowledge, experience etc);
- The transfer of goods from the seller to the buyer is not made in a natural, real way, but in an indirect form (technical documentation, technical assistance);
- The licensed goods for its intended purpose are purely personal in nature and dispersed throughout owners.
In drawing up the license agreement, be aware that the content of the license agreements not regulated, they are determined by the general rules of civil law. However, this agreement should have a number of conditions, and few of them are required.
The contract shall provide to the transfer and the amount of transferred rights (license type). Also in the license agreement you must specify its territorial effect, duration, remuneration and the rights and obligations of the parties.
By volume of the rights granted license agreements are basically reduced into two types: the agreement of a simple (non-exclusive) license and an exclusive license agreement.
Single license includes transfer of the right the buyer (the licensee) to use ITNs within set limits, keeping the seller (licensor) the right to use ITNs on the same area or the same range.
In accordance with the agreement on the exclusive license, the licensor shall not be entitled to use the mark itself or share his rights with third parties within the limits established by agreement. At the same time, the licensee may grant sub-licenses for the right to use ITNs to other companies only if the treaty provides that condition.
There are also Distinction between full and partial licenses. By the full license the right to use ITNs is transferred to the licensee in its entirety. By the partial license the right to use ITNs is transferred to the licensee only in certain parts.
It is also worth to be considered that the territory covered by the license agreement, cannot be wider than the territory of the legal protection of the ITNs. Legal protection of the ITNs is a territorial. And if it is protected on the territory of Ukraine, the license agreement may be entered into only for its use in Ukraine. Of course, the territory in which the licensee is entitled to use the facility license could be narrowed.
For the preparation of a license agreement or a contract of assignment of a IPR we need from you the following information and documents:
- Your name, position and contact coordinate (e-mail, office and mobile phone, fax).
- The amount name and number of certificates / international registration of intellectual property rights that you want to transfer under a license agreement (in the case of combined visual and graphic notation for the trademarks its description of the image and the code name).
- Full details of the parties to the contract.
- Financial terms of the contract.
- Your requirements to the contract.