Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Registered designs/patents – The holder of an exclusive licence under a registered design/patent shall have the same right as the registered owner to bring proceedings for an infringement of the right committed after the date of the grant of the licence. Non-exclusive licensees do not have this right.
Plant varieties/trade marks – Exclusive and non-exclusive licensees are not given different rights.
Except as otherwise stipulated in the licensing contract, exclusive licensees are entitled to bring an action for infringement if, after notice, the owner of the IPR does not bring the proceedings.
Non-exclusive licensee may join the infringement action initiated by the owner of the IPR in order to obtain compensation for his own prejudice.
- patents: IPC art. L.615-2;
- trademarks: IPC art. L.716-5;
- designs: IPC art. L.521-2.
R: In general terms there are no different rights but it will depend on the licence agreement.
Patent: The Indian patent law provides similar rights to the exclusive license holder such as those of the patentee and such an exclusive licensee has the right to initiate an infringement suit against an infringer if an act of infringement is committed after the date of the license.
Trade mark: in terms of the exclusive and non-exclusive licensees, there is no difference in terms of enforcement
Copyright: No difference in terms of the enforcement rights granted.
No, for the purposes of enforcement of the licensed IP, the law does not distinguish between exclusive and non-exclusive licenses.
Exclusive licensees (licensee of senyo- jisshi-ken or senyo-shiyo-ken, see 13) of patents, utility model rights, trade marks and design rights can seek an injunction against, or an award of damages from, the infringer (within the scope of the license), while in principle, other types of licensees cannot seek an injunction or damages.
Both licensees give the same rights to enforce the licensed intellectual property rights. However, such right can be limited completely or partially according to what the parties agreed.
Exclusive licensees can either enforce rights of their own accord without consent of the licensor or file a joint action with the licensor.
Sole licensees must enforce the rights in a joint action with the licensor, unless the licensor consents otherwise.
Non-exclusive licensees must file a joint action with the licensor.
Exclusive licensees have certain statutory rights to bring infringement proceedings in their own name, but the right owner must be joined in the proceedings, either as co-claimant or as a further defendant. Non-exclusive licensees, on the other hand, do not have the right to commence infringement proceedings. However, non-exclusive licensees of trade marks can call upon the proprietor to take action, and may take action themselves if the proprietor does not do so.
However, it is worth noting that these statutory defaults are commonly varied in negotiated licence agreements, so it is important to check the governing agreement to confirm the parties' rights in relation to infringement proceedings.
Patents and Design Registrations
No. Only the patentee/design proprietor may institute proceedings for enforcement. A licensee who has been so recorded on the Register can intervene in infringement proceedings and claim damages.
Plant Breeders’ Rights
No, only a PBR holder can seemingly enforce a PBR. A licensee, whether exclusive or non-exclusive, can however institute a claim for actual damages.
No. However, an exclusive or non-exclusive licensee can be recorded as a registered user, who shall be entitled to call upon the proprietor/licensor to institute infringement proceedings, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings in his own name as if he were the proprietor.
Yes. An exclusive licensee and an exclusive sub-licensee shall have the same rights of action and be entitled to the same remedies as if the licence were an assignment, and those rights and remedies shall be concurrent with the rights and remedies of the owner of the copyright.
The UAE IP Laws do not differentiate between exclusive and non-exclusive licensees in respect of the enforcement of the licensed rights.
In this respect, the Patent and Design Law specifies that a licensee has the right to enforce its recorded licensed rights against a third party infringer provided that he has notified the patentee of such infringement by registered letter and the patentee does not initiate proceedings within 30 days from the notification date.