Transfer of rights to an industrial design

The transfer of industrial design rights in Ukraine is an important aspect of legal protection of intellectual property, especially for businesses seeking to protect their innovations and designs. An industrial design, as an object of intellectual property rights, protects the appearance of a product that has novelty and originality. In accordance with Ukrainian legislation, in particular the Law of Ukraine “On Protection of Rights to Industrial Designs”, the owner of rights to an industrial design may transfer these rights to other persons on the basis of a contract.

The main ways of transferring rights to an industrial design

The transfer of rights to an industrial design can be carried out through various acts, among which the most common are:

• Agreement on the transfer of ownership (alienation). According to such an agreement, the owner of the industrial design transfers all rights to it to another person. This is a complete transfer of rights, after which the former owner loses all rights to this sample.
• License agreement. According to this contract, the owner of an industrial design grants another person the right to use this design under certain conditions. A license can be exclusive or non-exclusive, which determines whether the licensee has an exclusive right to use the design, or whether others can also obtain such rights.
• Sublicense agreement. This is an agreement concluded between the licensee and a third party with the permission of the owner of the rights to the industrial design. Under this contract, the licensee transfers part of his rights to use the industrial design to another person.
• Agreement on commercial concession. The owner of an industrial design can transfer it for use together with other intellectual property under commercial concession agreements (franchise) together with other intellectual property, trade secrets for conducting a certain business.

Peculiarities of concluding agreements on the transfer of rights

When concluding agreements on the transfer of rights to an industrial design, several important aspects must be taken into account:

• Written form. All agreements on the transfer of rights to an industrial design must be concluded in writing. Failure to comply with this requirement may invalidate the contract.
• State registration. Contracts on the transfer of ownership of an industrial design are subject to mandatory state registration at the Ukrainian National Office of Intellectual Property and Innovation (UKRNOIVI). This provides official recognition of the transfer of rights and protection of the rights of new owners. License agreements can be registered at the request of the parties to the agreement.
• Cost of transfer of rights. Contracts must clearly define the value of the transfer of rights to an industrial design. The cost may include both a one-time fee and periodic payments, depending on the terms of the contract.
• Parties to the contract. It is important to identify the parties to the contract, their legal personality and ability to conclude contracts. In particular, if one of the parties is a legal entity, it is necessary to check its eligibility to enter into such agreements.
• Scope of transfer of rights. When concluding a franchise or licensing agreement, it is important to agree in detail exactly how the industrial design can be used, what rights are transferred, whether they are exclusive, whether further sublicense is possible, etc.

Transfer of rights to an industrial design is an important tool for intellectual property management, allowing companies to optimize their assets, protect innovations and generate additional revenues. At the same time, the correct design of contractual relations and compliance with the requirements of the law are key factors in the successful transfer of rights.

Consultation with an experienced lawyer of the Prykhodko and Partners law firm will help avoid risks and ensure effective protection of the interests of all participants in the transaction.