Development of a license agreement for the object of intellectual property rights

Ownership of rights to an object of intellectual property allows its owner not only to protect his invention from outside encroachment, but also to grant permission to another person to use it on the basis of a license or certificate. Lawyers of our company “PRIKHODKO & PARTNERS” will help you draw up a license agreement for OPIS (objects of intellectual property rights).

According to the Civil Code of Ukraine, the owner of a patent can:

• Grant another person a license (permission) to use the object of intellectual property rights.
• Partially or completely sell (transfer) the rights to such an object to another person.

The subject of a license agreement cannot be the right to use intellectual property objects that are not valid at the time of conclusion of the agreement (Part 5 of Article 1109 of the Civil Code).

In accordance with the license agreement, the licensor grants the licensee permission to use objects of intellectual property rights on conditions determined by mutual agreement of the parties. This takes into account the requirements of the Civil Code and other laws.

If the license agreement provides for a provision on a sublicensee, a sublicense agreement is additionally concluded. According to the agreement, the licensee may transfer to a third party, that is, a sublicensee, a document for the use of intellectual property rights (sublicense).

The license agreement specifies:

• Scope of use of the intellectual property object.
• The amount, terms and procedure for payment of the use of intellectual property.
• Terms that the parties consider appropriate to include in the contract.

Types of licenses for intellectual property objects

License agreements can be divided into 3 groups:

• Exceptional

It is provided only to one licensee without the possibility of its use by other persons. An exclusive license provides for the use of an intellectual property object only in the area defined by the license.

• Single

It is received by only one licensee, but the right to use the intellectual property object by the licensor is not excluded.

• Non-exclusive

The licensor is allowed to use the intellectual property and grant licenses to others.

According to the current Ukrainian legislation, there is another type of license. This is an open license. According to it, the owner of a certificate (patent) for an intellectual property object has the right to submit to the State Department an application for readiness to grant permission to any person to use the patented intellectual property object. In other words, the patent owner declares an open license for any person who wants to use this patented object. To stimulate open licenses, the legislation provides for certain benefits for patent holders.

It is also conditionally possible to divide all licenses into two groups: simple and complex (full).

1. Simple license

The licensee receives the right to use the object of the license in accordance with the framework established by the agreements. In this case, the licensor can use the intellectual property object in the same territory. Also, the licensor may grant the right to own object of intellectual work to other licensors. This term in the legislation of Ukraine is known as “non-exclusive license”.

2. Full license

This is actually a contract for the sale of intellectual property.

Thus, a license agreement is a sale of permission for partial or full use of intellectual property.

The full license is valid for the entire term of the patent. Although this is a sale of the object itself, from a legal point of view, there is a fundamental difference between the granting of a full license and the sale of a patent. If the patent is sold under certain conditions (for example, every year the patent owner receives royalties), failure to pay the next payment does not lead to the restoration of the right to the patent from the seller. In turn, a full license agreement is concluded on the same terms, however, non-payment of the next payment by the licensee leads to termination of the agreement.

The license agreement must specify:

• Parties and the license agreement.
• Certificate number.
• List of services and goods.
• The scope of transferred rights.

The employees of our law firm have many years of experience in both Ukrainian and international markets.

We will help you protect your intellectual property and provide a full range of legal services:

• Development and registration of license agreements.
• Making changes to contracts.
• State registration of license agreements for OPIS.
• Consulting services, etc.

PRIKHODKO & PARTNERS lawyers guarantee the confidentiality of information received from each client. An individual approach to the execution of contracts for OPIS is the key to our success.

Do you have any more questions? Sign up for a consultation and calculation of the cost of developing a license agreement for an object of intellectual property rights – just answer in the form below!