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Intellectual property rights transfer

Sometimes, for various reasons, intellectual property is transferred for use to third parties. It is better to pass them on for the benefit of yourself, including commercial ones, with state registration. This gives the owner and the licensee more security and confidence that their interests will not be harmed by illegal actions.

Only property rights can be transferred, this is done under the so-called copyright agreements. There are two main types of the latter:

  • The license is exclusive, non-exclusive, or single. The copyright agreement on the transfer of non-exclusive rights allows the licensee to use the object on an equal basis with the copyright holder. The latter does not lose the intellectual property rights to the object.
  • Complete alienation. The author loses the ability to dispose of the work in terms of property, but does not lose authorship.

Copyright agreements are concluded in writing. They clearly spell out the opportunities for licensees, and you cannot go beyond them. Reproduction, production, translation, alteration and other possibilities may be permitted.

The use of intellectual property usually occurs on a reimbursable basis. That is, for remuneration to the owner from the licensee, in accordance with the conditions specified in the contract. This kind of use of intellectual property can be quite profitable for the copyright holder.

Copyright agreements apply to specific territories. Specialists of the SION patent law firm make sure that the essential conditions are clearly spelled out. This applies to the volume of assignment, territories, remuneration. We have extensive experience in the management of intellectual property.

State registration of a license agreement

The license means the ability to use. Copyright licensing agreements are not subject to mandatory state registration. However, the latter helps to better protect the interests of the parties. A copy of the document, which is transferred to the state for storage, is a sample of the original text. In the event of disputes or litigation, it will become irrefutable evidence.

In Ukraine, it is necessary to register with the National Intellectual Property Authority (NIPA, aka Ukrpatent), other countries have similar offices. It is necessary to prepare a package of documents for registration:

  • statement;
  • power of attorney confirming the powers of the applicant;
  • permission of the parties to process personal data;
  • translation of documents into the state language when registering abroad.

Upon state registration, the corresponding tax is paid and publication is made in the official bulletin, the agreement is entered into the register. There are many legal and tax nuances associated with registration, so it would be logical to entrust it to professionals with experience.

Our firm carries out licensing of intellectual property in Ukraine, Great Britain (through a representative office), as well as in other countries through attorneys with a national license. We strive to ensure that both parties receive complete information about the rights of third parties to the object, so that later there are no surprises.

Responsibility under the Copyright Agreement

Owning and using intellectual property is a specific area. Responsibility for improper performance of obligations, protection of authorship, enforcement measures here also have some peculiarities. For example:

  • The responsibility of the user may arise if he violated the integrity of the work, caused damage to the author, did not pay remuneration, etc.
  • The responsibility of the author may appear if he did not provide (did not create) the work on time, issued two single licenses for one product, and so on.

It is possible to provide works under copyright agreements, having titles of protection for the results of intellectual activity and even not having them. However, the registration certificate (for the song, software) gives more opportunities for defensive maneuvers.

Sanctions are usually written in the terms of the agreement themselves. This can be a return of remuneration, compensation, other measures with or without termination of the contract. Our specialists will make sure that the obligations and responsibilities of the party are adequately spelled out when concluding a document for the transfer of IP rights. So that bad faith is easier to prove if it occurs.

Copyright Alienation Agreement

Such documents imply the full transfer of exclusive rights to the intellectual property. The closest analogue of the name is sale, although this word is not entirely correct and is not used by law. Usually alienation is done for material reward. However, sometimes the transfer of exclusive copyright is free of charge and is similar to a donation.

There are two essential conditions that must be prescribed:

  • Subject (an object and an indication that the ownership of it is transferred in full).
  • Price (usually a one-time payment, although sometimes an installment plan is issued).

The document is drawn up only in writing. If the object has passed state registration, then the alienation agreement is also subject to mandatory registration in a state body. This is especially true for software and databases. Otherwise, the transfer of exclusive rights will be invalidated by law.

We will ensure that the assignment is carried out in accordance with the laws of the country in which the action is taking place. So that the interests of the parties are respected in the short and long term. Diversion of property rights (sometimes called a concession) is a serious step that affects the well-being and reputation of the parties.

To calculate the cost of starting cooperation, please fill out the feedback form and we will contact you or write to us by mail: info@sion.ua.

Is it possible to use a trademark without a license agreement?

Commercial use of the trademark is impossible without the written permission of the owner, that is, a license agreement. However, Ukrainian legislation provides that the owner cannot prohibit third parties from using the trademark without asking for non-commercial purposes. That is, if you do not plan to make a profit. At the same time, the term “non-commercial” is not regulated by the law.

The mention of TM in advertising is considered use, for this you need to ask permission (part 4 of Article 16 of the Law of Ukraine “On the Protection of Marks for Goods and Services.” To place a logo on your website, the owner can write a letter of permission. This is a simplified version of the license.

What is intellectual property licensing for?

For their material and reputation security, as well as for the opportunity to receive additional profit from intellectual property.