License agreement

A license agreement is an agreement that provides for the granting by one party (the licensor) to the other party (the licensee) of permission to use the object of intellectual property rights (the license). The terms of the license agreement are determined by mutual consent of the parties, taking into account the requirements of the current legislation (part one of Article 1109 of the Civil Code of Ukraine).

Various factors should be taken into account when concluding a license agreement. It is very difficult to do without special knowledge. Specialists of our law firm “PRIKHODKO & PARTNERS” will be able to help you. The conclusion of a license agreement is one of the components of property rights related to intellectual property.

In the modern world, industrial companies and firms cannot exist without the development of technologies. This directly affects their overall level of competitiveness. In order to keep up with competitors, a business can invest in the development of new technologies or purchase a license to use an existing invention for a fee to the author.

The inventor can fully dispose of his work, in particular, use it himself or allow third parties to use it. All this is determined by the license agreement.

The subject of the license agreement is a license, that is, permission to use an element of intellectual property.

The object of the license agreement is a utility model, invention, trademark, industrial design, layout of an integrated microcircuit, animal breed or plant variety, object of related rights or copyright.

Terms and types of license agreement

The terms of the license agreement are determined by the third part of Art. 1109 of the Civil Code of Ukraine. These include:

• Type of license.
• Scope of use.

In addition, the license agreement specifies specific rights, as well as the terms of transfer and methods of their use. The size, terms and order of payments for intellectual property objects are also determined.

License under the contract can be:

• Exceptional

The license prohibits the owner from issuing licenses to third parties (paragraph two, part three of Article 1108 of the Civil Code of Ukraine).

• Non-exclusive

The owner of the object of the license agreement (for example, a patent) can continue to use it in the field not limited by the license. That is, it remains possible to issue a license to other persons.

This type of license exists by default in the license agreement.

• Single

It differs from an exclusive license in that it allows the owner to use the object in a field not limited by the license. However, the owner cannot issue other licenses.

Thus, we are talking about the scope of the license, that is, the scope of the transferred rights, their use, territory and term.

If it is provided for in the license agreement, the licensee (licenseee) may enter into an agreement on the transfer of rights to use the object of intellectual property to another person. We are talking about a sublicense agreement.

The types of license agreements also include:

1. Copyright agreement.
2. Agreement on granting rights to a utility model, invention or industrial design.
3. Agreement on granting related rights.
4. Agreement on the granting of rights to the topology of integrated microcircuits.
5. Agreement on granting rights to a trademark.
6. Agreement on the granting of rights to breeding achievements.

If we are talking about the availability of a law enforcement document, license agreements can be divided into the following groups:

• Patent license agreements. Legal relations, the objects of which are protected by a certificate or patent.
• Patent-free license agreements. Legal relationships, the objects of which are not protected by protected documents (ie, copyright licensing agreements).

So, the license agreement is a type of copyright agreement on the transfer of non-exclusive property rights. The license itself can be drawn up as an integral part of the license agreement or as a separate document.

A license agreement is a transfer of only a non-exclusive right, that is, the right to use. The contract also contains information about the license being transferred.

Examples of license agreements include:

• Computer programs for accounting.
• Using someone else’s website.
• Transfer of the right to use a trademark, etc.

Thus, concluding a license agreement is a responsible and necessary part of cooperation in the field of creative activity, innovative business and other areas of intellectual development. This type of agreement provides for a long-term period of cooperation between the parties. That is why it is very important to take care of all the tax and legal nuances of concluding a contract. Carelessness and legal haste can cause unpleasant consequences. Therefore, it is better to entrust this matter to real professionals – employees of our law firm “PRIKHODKO & PARTNERS”.