Transfer of rights and issuance of licenses for the object of intellectual property

In order to make a profit and protect against unfair competition, it is necessary to legitimize your activity in the legal sphere. What is it about? This is, first of all, the protection of one’s intellectual property through the transfer of rights and the issuance of licenses. Employees of our law firm “PRIKHODKO & PARTNERS” will help you with this.

The transfer of rights and the issuance of licenses allows the owner to retain all his rights as the author of the object of intellectual property.

Types of licenses

License agreements, depending on the existing license, can be divided into the following types:

• Exclusive license

It is provided only to one licensee. At the same time, the licensor does not have the right to use the object in the established area for the period stipulated in the license agreement. He is also limited in his rights to issue a license to use the intellectual property object to other persons.

• Non-exclusive license

The licensee can use the object of intellectual property in the established field for the term stipulated in the contract. A non-exclusive license does not limit the rights of the licensor to use the intellectual property object, including the issuance of licenses for its use to other persons.

• Single license

It is provided only to one licensee. Thus, the licensor cannot issue a license to use the intellectual property object to other persons, but can use it in the established field.

According to Ukrainian legislation, license registration is not mandatory. It is carried out at the request of the licensee or licensor.

If we are talking about the transfer of rights to an intellectual property object, issuing a license means obtaining full rights to it. Registration of an agreement on the transfer of rights to an object of intellectual property is mandatory.

Features of licensing of intellectual property objects

In the process of concluding a license agreement, both the licensee and the licensor receive significant benefits. If we are talking about a trademark or other object of intellectual property, their transfer can be carried out on the basis of a patent or certificate.

If the document does not specify specific terms, the object of intellectual property can be used by the licensee until the moment when the property rights of the licensor will be valid (according to the legislation of Ukraine – no more than five years with the possibility of extension).

The license agreement also outlines the scope of the license. This is especially true for brands and trademarks. An individual or company receives, under certain conditions, the exclusive right to use the brand within a specific territory.

Among the important terms of the license agreement:

• Subject of the agreement

We are talking about the object of intellectual property (scientific research, theories, software, author’s approaches to development and training, trademarks and brands).

• Type of license

Exceptional, non-exceptional, single, etc.

• Territory, terms, method of use of the subject of the license agreement.
• Conditions for reimbursement of the cost of the license (royalty, flat fee).

Violation of licensing conditions is dealt with by licensing bodies in the process of checking business entities. In such a case, the licensing body issues an order on the need to eliminate the violation of licensing conditions. Repeated violation or failure to comply with the order to eliminate violations of license conditions leads to the cancellation of the license (according to Article 21 of the Law on Licensing).

One of the main conditions for signing any license agreement is that each party to the agreement receives the maximum benefit. Thus, the author of intellectual property can monetize it, receiving a profit based on this. The legal successor, in turn, can get access to use information and unique assets.

Drawing up a license agreement or transferring rights to intellectual property is a difficult task that should be entrusted to real professionals. The task of an experienced lawyer is to protect the author’s rights as much as possible, while providing the most prosaic and favorable terms of the agreement to the licensees. This is a very important competitive advantage of our company.

If you need to transfer the rights to intellectual property objects based on the conclusion of a license agreement, our specialists will help you with this!

We will advise you on the following issues:

• Essential terms of contracts, types of license for the use of an intellectual property object.
• Requirements of current legislation regarding the conclusion of a license agreement.

In addition, the lawyers of “PRIKHODKO & PARTNERS” will provide full legal support for the transfer of rights to intellectual property objects and the issuance of licenses. Do you still have questions? Sign up for a consultation with “PRIKHODKO & PARTNERS” lawyers – leave a request below!