Patent Attorney of Ukraine Oleksandr Kolosov

Licensing agreements
preparation and registration

Patent Attorney of Ukraine Oleksandr Kolosov provides services for registration of license agreements and contracts for the transfer of property rights .

In recent years all over the world are actively developing the market for intellectual property (IP). Creating new IPO aims to achieve the following objectives: to self or their implementation in order to obtain certain economic benefits, or the transfer created IPO to introduce to others, subject to obtaining the relevant IPO developer of adequate financial compensation for their work.

While in the first case, the right of the IPO are a person who has created them, in the second case, the person must dispose of these rights, that is to pass them or give another person a license to use them.

So, in modern conditions the exclusive rights on industrial property (hereinafter - IPO) is an effective market product. This means that these rights can be realized by selling the patent (or other) rights or licensing.

The right to use the IPO can be transferred as a whole or in part through authorization for its use (license). Legal form of licensing is the License agreement.

License agreement (hereinafter - LA) is a bilateral agreement, under which a party that owns exclusive right to use the IPO (licensor) grants the other party (the licensee) permission to use the IPO, and the licensee is obliged to pay the licensor fees and to perform other operations under the contract.

From the point of view of the law, any license under the IPO is a classic trade agreement, which takes the form of LA. Terms of LA determined depending on the situation on the market, including the supply and demand for a license, in the interests of the seller and the buyer, as well as the characteristics of the IPO and the rights granted to the buyer.

As practice shows, LA are needed for both licensors and licensees. In the first case (for the licensor) may be caused by a number following reasons: lack of own production facilities for the licensor needs better marketing and market development to meet the growing consumer demand for new manufactured goods; geographical remoteness potentially attractive segment of the market from their place of production of the dislocation; the strict protectionist policies in any state, making imports of finished proprietary products unprofitable occupation, and because of the scarcity of their own and/or borrowed funds and a number of other reasons.

Licensees LA is also beneficial for a number of reasons: the potential exists for rapid and relatively low-cost, ie without significant costs of research, development and/or technological works, the output of the selected geographical segment of the market leaders in terms of sales for the attractive price and / or quality of the new goods that have state protection as IPO; licensing operations are more profitable and less risky than direct investment; opportunities to profit from the sale of co-ops with the licensor on the location of the licensee.

Price. As a rule, the price (market) of each side of the license is determined by negotiation, using the results of independent market research.

It is highly desirable that at the start of negotiations on the sale of a license in the country of residence of the potential licensee has acted issued by the licensor to the national or regional patent for the IPO, or filed an application for registration on the international procedure for IPO, which is the subject of LA.

Another unconventional object IPO, namely the know-how, that is, the secrets of any commercially valuable products that are stored in secret, can be transmitted from the owner of the know-how to the user only in the LA subject to non-disclosure of the content of the know-how to third parties. Moreover, the ownership of the know-how in most countries, including Ukraine, are not regulated by any specific law, and relies entirely on the customs and good manners.

LA vary in:
• type of protected IPO (inventions, utility models, industrial designs, know-how, trademarks for goods and services, etc.);
• scope of rights that are transferred by the license agreement (individual, exclusive, non-exclusive).

Individual licenses are issued only one licensee and licensor excludes the possibility of granting licenses to others to use the object of intellectual property rights in the field, which is limited by the license, but does not rule out the possibility of using the licensor of this object in the marked area.

Under exclusive license the licensor authorizes the licensee to use IPO in particular scope, on particular territory, for a fixed period, and reserves his right to use the IPO on his own, but only in not transferred part. The licensor has no right to grant other licenses for use of this IPO to others on the same territory and in same scope. The licensee is entitled to sublicense. In this case, the responsibility to the licensor for the actions of sub-licensee is a licensee, if the LD provides otherwise.

Under non-exclusive license the licensor gives the licensee permission to use IPO, and reserves his right to use the IPO on his own, including the right to grant licenses to third parties.

There is also a "full" license – a form of an exclusive license which gives the licensee all the property rights that result from the protective document (patent or certificate for term of the contract).

Sublicense - a kind of simple and exclusive licenses, which differs from the latter in that it concludes its counterparty licensee who purchased the original license. Under the terms of the volume and sub-license the rights transferred is totally dependent on the original signed a LA. Licensees who receive a simple license, sub-license transfer are not eligible.

LA on the use of IPO may be drawn up after exclusive rights take effect, i. e. from the date of publication in the official Bulletin of granting data and only for the period of the protective document validity.

For drawing up proper LA it’s important to clarify following points: contract subject matter; scope of the transferred rights; rights and obligations of the parties; type of license; licensed territory; term of the license agreement, etc.

Validity of LA. LAs are for a certain period of time (usually a period of obsolescence of the subject LA). However, this period must end no later than the term of the exclusive property rights to the IPO, designated in the contract.

The owner of a patent for an IPO (invention, utility model or industrial design) also has the right not only pass in the LA, but also to sell his patent (assign its rights to the patent) to IPO anyone. From the point of view of Ukrainian legislation, the sale is a patent for IPO called transfer of ownership.

In order to effect the transfer of ownership of a patent, it is necessary to sign a contract on the transfer of ownership between the current and future owners of a patent for IPO.

The agreement on the transfer of patent rights to the IPO, by analogy with LA, it is necessary to specify: full details of the parties who enter into a contract; patent number on the IPO; OPS name specified in the patent; the rights and obligations of the parties; conditions for the transfer of rights to IPO.

If the patent holder to IPO are several individuals and/or entities, all actions relating to the transfer of patent rights to IPOs, defined agreement between the co-owners. In practice, this means that each co-owner of the patent. to the IPO has the right to use the patent on your own, but none of them can transmit a third party without the permission of the other co-owners.

Record of LA (contract on the transfer of ownership) registration is entered into the State Register on the basis of the Office’ decision. Data on the license agreement (contract on the transfer of ownership) registration are published in the Official Bulletin.

The registration procedure LA (agreement to transfer the rights to IPO), usually lasts for 2 months from the filing date of a set of documents to the State Department of Intellectual Property of Ukraine.

Remember: Since the license agreement is a legal document, it should be drafted by an expert, in other words, the higher the potential commercial value of the IPO is, the more acute the need of professional assistance of the intellectual property representative (Patent Attorney) is.

Please contact us if you want to find out more about license agreements and agreements of transfer the rights to IPO.

(based on the materials of the State Department of Intellectual Property of Ukraine)

Why you may need this service?

  • LA is the most common means of transfer of rights to use the results of intellectual activity, in particular, trade marks, all over the world
  • Making operational a specific IPO
  • Getting mutual benefit at the conclusion of LD as the owner of the rights to the OPS and the user of the property
  • Expansion of markets for products protected by IPO
  • Gaining more benefit from the IPO object
  • Temporary assignment of the rights on IPO
  • Get substantial savings licensor due to lack of funds and time to promote your brand or technology and promote their business
  • Benefit from free advertising has promoted brand
  • Ensuring absolute owner of the exclusive rights of a legal monopoly to commit a variety of actions (to use the results of their creativity and their order) while prohibiting all other persons to perform these steps

Contact us! Our contacts

Procedure Attorney Fees Off. Fees
Document preparation and filing
Contract preparation The price is negotiable, contact us -
Filing of documents The price is negotiable, contact us -
Making a decision on the publication and entry of agreement information into the State Registering
     
Publication of information on the agreement in the Official Bulletin
Publication of information on license issue - 400 UAH

Contact us! Our contacts

There is no list of extra services and price list for them. Please contact us for details.

SERVICES
The necessary background information
  • Full name or the name of the applicant (s), its (their) address
  • The number (s) and the type of security documents on the transferred (s) IP object
  • The volume of transferred rights and conditions of contract
  • Power of Patent Attorney
  • Payment of Patent Attorney honorarium and official fees
Procedural terms of formalization and registration
  • from 5 days
    Preparation and filing of documents (for a standard contract)
  • 2 months
    The decision on the publication and entry into the State Registering a contract
  • twice a month
    Publication of information on the contract in the Official Bulletin
Final result
  • Decision to publish, and data entry in the State Register of contracts
  • The registered license agreement
  • Extract from the State Registry
Potential risks
  • Complexity to account all the nuances of licensing for each case
  • Complexity (even the possible loss of) control by licensor over the fulfillments of conditions of the LA by the licensee
  • The transfer into the hands of the licensee the right to influence the prestige and the name of the licensor