Industrial Property Rights Transfer

The industrial property includes TM, inventions, utility models, industrial designs, know-how. If any of such objects has passed state registration (a certificate or patent has been received for it), exclusive property rights to it can be assigned with state registration on a contractual basis. The agreement is signed in writing and entered into the state register. It can only be concluded in the country where the title of protection is valid.

The owner of the industrial property can dispose of the property at his own discretion, including the full or partial cession of property rights. The most common types of legal relationships are reflected in such contracts:

• Licensed – permissionе to use the object under certain conditions.
• On the transfer of exclusive property rights (assignment) – the closest analogue of a sale, the author ceases to be considered the owner.
• About creating an object to order – an industrial property is created by the author, but registered by the customer.

SION has been working with documents related to the cession of industrial property for more than 10 years. We draw up any type of contract so as to comply with the interests of the client, minimize the risks of disputes and misunderstandings.

Trademark use agreement

In the activities of many TM owners, there comes a time when it is possible to receive income not only from the use of the brand, but also from its transfer to use under a license. These contracts are very common in business. They can relate to beauty salons, the production of products, things, etc.

Licenses are exclusive, singular, and non-exclusive. The licensed trademark accord benefits both parties. Licensees acquire the opportunity to make money on the brand. And the owner of the trademark receives a reward and proof of use of the trademark. You need to use it within 3 years after registration so as not to lose it.

In some cases, objects are transferred on a non-contractual basis. For example, upon termination of a legal entity – to legal successors, upon recovery of property during an auction, upon inheritance. Another option is to use the brand under the control of the TM owner. Let’s say they are members of one holding.

The owner receives the remuneration in the form of royalties (periodic payments – interest or a fixed amount) or a lump-sum (one-time) payment. Our experts will advise in detail on the contractual terms. If necessary, they will make an assessment of the trademark, help to calculate a profitable and justified amount of royalties for the owner.

The term of the license agreement for the trademark

If it is necessary to register it, it will be necessary to pay a state fee. These contracts have a limited duration. The latter cannot exceed the period of validity of the exclusive right to the icon, as established by law. And the badge in most countries is valid for 10 years, after which you can request an extension for the same number of years indefinitely.

Typically, the validity period of the trademark owner and the licensee is specified in the text. If this is not the case, the agreement is considered valid for 5 years, the term is typical for many countries of the world. If, within a 6-month period before the expiration of 5 years, none of the parties expressed a desire to terminate the contract, then, it is automatically extended. However, you can write your own conditions.

Transfer of patent rights

You can transfer patent rights to any third parties. This is done under two types of contracts: licensing and alienation. You can buy a patent by deal of alienation, or assignment. The latter term is somewhat outdated, although it is still sometimes used today.

When buying and selling, the whole range of rights is assigned. And the copyright holder loses the ability to use the object for his own purposes. However, if earlier he provided licenses to third parties, then they allow you to use the object until the expiration date. That is, the sale of a patent for an invention or utility model does not always provide an opportunity to have a monopoly on a technical novelty. The new patent owner will be able to sell the rights or transfer them by licensing.

Alienation can be carried out even before the grant of a patent. Then the state fee will be paid not by the inventor, but by the person to whom the registration is carried out. The concession must be duly endorsed. If there is a group of patent holders, they can all sign or entrust approval to one representative. We make sure that the rights to the utility model or invention are assigned to the appropriate extent, and the responsible agency has given its consent to registration.

The procedure for alienating a patent

The process usually takes 2 months, if there are no delays due to incorrectly entered details and other data. We make sure that this does not happen. We carry out the procedure according to the following algorithm We:

• check the rights of the copyright holder and preliminarily – the object. We establish whether encumbrances have been imposed. If the copyright holders are a group of individuals, they must all agree to the expropriation.
• receive the necessary documents from the parties.
• draw up and execute a written contract.
• pay the obligatory state duty, submit the papers.
• the responsible agency publishes the data in the official gazette.
• the new copyright holder receives an extract from the register.

Before making a deal, we carefully check the purity of the object that the copyright holders are going to sell. We help prepare for the deal, carefully prescribe the essential conditions (subject, amount of remuneration, and others). We will be happy to help you carry out the state registration of the transfer.

Patent agreement

It will be valid for the period as long as the legal protection of the patent or utility model is carried out, unless otherwise stated. The document must be registered in the official department of the country where the patenting was carried out. The purchase will not be considered valid without registration.

Our experts help you draw up a document, register it with the IP office of the required country, and make changes if necessary. To do this, the parties will need the following documents:

• individual – full name, address, passport, copy of the patent;
• legal entity – the name of the company, full name and position of the head, bank details, a copy of the patent;
• application for state registration and a copy of the contract;
• power of attorney to our specialist to represent interests.

Most often, it is on reimbursable terms (the text should include a reward), although it can be gratuitous (this also needs to be stipulated). It begins to operate from the date of signing, but comes into force from the moment of registration with IP office or a responsible body of another country.

Exclusive License Agreement

Implies that a monopoly for the use of the facility is transferred to the licensee under certain conditions. Important features of an exclusive conclude for the copyright holder:

• He will not be able to use the object himself according to the agreed conditions. For example, in a certain area within a specified time frame.
• Can use the item in all other aspects not covered by the accord.
• May not grant other exclusive use licenses under the same conditions. However, there may be another type of activity in other territories.
• Even with the full cession of rights, the licensor remains the formal copyright holder. When the license contract expires, all rights to it return. This is their difference.

In contrast to the exclusive, there is a simple non-exclusive license. By providing it, the copyright holder retains all the possibilities specified in the title of protection. And may issue other non-exclusive licenses in the same amount to different people. If you are in doubt about which type of licensing to choose or which fee to assign, we will advise. And we will calculate the amount based on practice and real data.

Exclusive License Terms

In this agreement, it is very important to prescribe the scope of the assignment rights and their restrictions by territory, time and type of activity. For example, to allow selling (exporting abroad) a product in certain cities for 2 years. It is these conditions that will determine exclusivity.

Such a monopoly is beneficial to the licensee. If it does not establish a prohibition on the use of intellectual property by the holder, then this prohibition will arise by default in accordance with the law. But it is still better to prescribe prohibiting clauses in order to avoid misunderstandings. We will write down the terms of the contract so as to eliminate misunderstandings between the parties.

Patent license Agreement

Allows you to monetize the patent and get material benefits from it. Reserves the ownership of the technical solution to the holder, but allows the licensee to dispose of it. The terms of the document may include an invention, utility model or industrial design.

An exclusive license means an exclusive right for the licensee. It is mandatory to prescribe in the accord the subject matter, rights and obligations of the parties, the nature, the amount of remuneration, conditions of use and restrictions. The document is subject to mandatory registration with a government agency, the process will take from 2 months.

Industrial designs patent sale

Industrial designs, like inventions, can be assigned for use under license agreements (an exclusive and non-exclusive), as well as alienated rights to them. In the latter case, the contract must be entered into the state register.

If alienation (sale) is carried out in favor of a third party, it becomes the legal successor of the owner. That is, the prototype gets a new owner. However, a new certificate or a patent (according to the laws of some other countries) is not issued, but an extract from the register is provided.

SION’s attorneys help to draw up and conclude contracts for the alienation or transfer under a license of any industrial property. We have been dealing with these issues since 2011 in Ukraine and abroad, have gained considerable experience and are ready to implement it for the benefit of our clients.

For detailed information and to calculate the cost of cooperation, please mail by us: info@sion-ip.com.