Development of an agreement on the transfer of rights to intellectual property objects

Objects of intellectual property rights (hereinafter – IPR) are a very important component of modern legislation. Once intellectual property rights are registered, it is very difficult to transfer these rights to another person. The document that regulates the relationship between the author and the owners of objects of intellectual work is the Agreement on the Transfer of IP Rights. Drawing up such an agreement is one of the activities of our law firm “PRIKHODKO & PARTNERS”.

If you, as the right holder, do not plan to use the intellectual property objects, you can transfer the ownership rights to the intellectual property object in part or in full to other persons.

Property rights to IPPR are the ability to use, own and dispose of a specific object of intellectual property. If we are talking about the sale of rights, in most cases a sales contract is concluded. In this case, the owner loses absolutely all property rights to it. Thus, if, for example, the ownership of a patent for an invention is transferred, it is re-registered in the name of the new owner. That is, the new owner will have all property rights to the object of intellectual property. However, in most cases, the right to use it is transferred.

Transfer of IP rights through a license agreement

The transfer of copyright based on the conclusion of a license agreement involves the granting of permission to third parties to use an object that belongs to you in the course of their activities, while retaining your full ownership of this object. In the contract on the transfer of rights to IP rights, the following must be specified:

• Type of license.
• List of rights granted (ie, terms, scope, territory).
• Amount of payments.
• Miscellaneous.

The license agreement does not require notarization. The purpose of selling a license is to make a profit. At the same time, profits on market development and production are not lost. Thus, the sale of a license is a way of implementing technologies on the market without the need to sell commercial products. Revenues from the sale of licenses can cover the costs of scientific research.

Selling or buying a license is a business deal. The fact of buying or selling a license is legally formalized by a license agreement. Thus, the licensee can use the object of intellectual property only in a certain territory and for a certain period. The current Civil Code of Ukraine, depending on the amount of rights to be transferred, distributes licenses into the following categories:

• Exclusive license

Who is entitled to IP rights?

In this case, one licensee has IP rights. The document confirms the fact that the intellectual property object will not be used by the author in the specified field.

• Non-exclusive license

Who is entitled to IP?

The right to use IP is granted only to one licensee. The owner of an intellectual property object can also use it in any field.

• Single license

Who has rights to intellectual property objects?

One licensee has the right to use IP. The owner of the object of intellectual property can also use it in any field (as in the version with a non-exclusive license).

Franchise agreement and leasing for intellectual property objects

The owner of an intellectual property object can receive additional income under a commercial concession (franchise) contract. The copyright owner gives another person the opportunity to use the rights to his object of intellectual work (technology, industrial signs, trademarks, etc.).

Unlike a traditional license agreement, rights are transferred on a privileged, preferential basis. Yes, the user can get finished products under a registered trademark. Thus, he does not have to win a place in the market, while possible risks are minimized.

The only condition is that the franchise agreement contains a separate clause, according to which the quality of services and goods must not be lower than that of the owner of the intellectual property object.

Another variant of the agreement on the transfer of IP rights is leasing. Leasing involves the use of various types of technological equipment: devices, machines, etc., which are protected by patents and made at the level of inventions. In other words, together with the technological process and equipment, the rights to use the object of intellectual property are granted.

Leasing allows entrepreneurs who have just started their activity to open and expand their business with limited initial capital.

Experienced lawyers of our company “PRIKHODKO & PARTNERS” will help you draw up an agreement on the transfer of IPPR rights in such a way that no regulations are violated and, what is very important, your rights are reliably protected. Thus, if any controversial situation arises, you will always be able to come out of it as a winner.