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?
The grantor of an exclusive license shall not have the right to concede licenses with the same subject to other persons. He shall have the right to use the IP if this has been explicitly agreed.
There is no distinction between the rights of exclusive and non-exclusive licensees to request the patentee to institute infringement proceedings unless there are provisions to the contrary in the licence contract.
Where the patentee refuses or fails to institute infringement proceedings within three months from the receipt of the request, the licensee is able to institute the proceedings in his own name after notifying the patentee of his intention to do so. The patentee has the right to join in the proceedings.
There is no distinction between the rights of an exclusive and non-exclusive registered user. The registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the trade mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor a defendant (subject to any agreement subsisting between the registered user of a trade mark and the registered proprietor of the trade mark).
Where the registered proprietor fails to exercise the rights that has been conferred to them by their registration to the prejudice of the registered user, the registered user may apply to Court for an order, including ordering the registered user be recorded as the registered proprietor of the trade mark via rectification of the Register.
There is no distinction between the rights of exclusive and non-exclusive licensees in respect of enforcement. Except against the copyright owner, the exclusive licensee shall have the same rights of action and be entitled to the same remedies as those available in a legal action brought by a copyright owner for infringement of copyright as if the licence had been an assignment.
Where an action for infringement of copyright is brought either by the copyright owner or the exclusive licensee, and the action relates to an infringement in respect of which they have concurrent rights of action under that section, he is not entitled, except with the leave of court, to proceed with the action unless the copyright owner or the licensee is joined as a plaintiff in the action or added as a defendant. An exclusive licensee however, may obtain an interlocutory injunction without having to join the copyright owner as a party in the application.
Where an action, in so far as it is brought by the copyright owner for infringement of copyright, relates to an infringement in respect of which the owner of the copyright and the exclusive licensee have concurrent rights of action, and an account of profits is directed to be taken in respect of that infringement, then subject to any agreement of which the court is aware whereby the application of those profits is determined as between the owner of the copyright and the exclusive licensee, the court shall apportion the profits between them as the court may consider just.
Where an exclusive or non-exclusive licensee wants to institute any infringement proceedings, the licensee must prove that they had made a prior request to the registered owner to institute proceedings for the infringement complained of by him and that the registered owner had refused or failed to institute the proceedings within three months from the receipt of the request. The registered owner however still has the right to join the proceedings.
Absent an agreement to the contrary, mandatory and exclusive licensees of a patent or plant variety right may initiate counterfeit proceedings if the patent or plant variety holder has been put on notice of the infringement, but fails to take action. A non-exclusive licensee may only intervene in counterfeit proceedings initiated by the patent or plant variety holder.
For the other IP rights, no distinction is made in the protection of exclusive and non-exclusive licensees. The possibility to take legal action will depend on the licensing agreement.
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.
Exclusive and non-exclusive licensees have the same rights in respect of the enforcement of the licensed IP. The rights of both exclusive and non-exclusive licensees depend on what are granted to them under the license agreement.
Generally, only the owner and successors in title can sue another party for patent infringement. An exclusive licensee will typically have the right to sue another party under the patent to protect the exclusivity granted. A non-exclusive licensee does not have the right to sue another party under the patent – the patent owner must be joined in any such lawsuit.
Under certain circumstances, an exclusive licensee can pursue a trademark infringement action. A non-exclusive licensee cannot.
The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for infringement of a right to which they have exclusivity. A non-exclusive licensee cannot sue another party for copyright infringement.
(d) Trade Secrets
In at least some jurisdictions, both exclusive and non-exclusive licensees may bring an action for misappropriation of the licensed trade secret.
Non-exclusive licensees generally need the consent of the rights owner to initiate legal proceedings.
The exclusive licensee is considered to be eligible to initiate legal proceedings regardless of the consent of the proprietor unless it has been otherwise agreed upon in the licence agreement.
Yes, there is a difference. Exclusive licensees of a patent, trademark, design or copyright are entitled by law to initiate proceedings against third parties infringing the intellectual property right. They are entitled to do so without the consent of the owner or licensor and irrespective of the registration of the licence in the register. The licensor or owner, however, can contractually prohibit the licensee from initiating proceedings without specific consent. Non-exclusive licensees, on the other hand, cannot initiate such proceedings without the consent of the licensor or owner.
Non-exclusive and exclusive licensees enjoy the same rights in case of infringement action initiated by the licensor. In both cases the terms of the license agreement should be regarded.
Considering that the exclusive license is issued to one licensee only with no right to use the licensed IP object by the rights owner within the licensed scope of rights, the exclusive license agreement often grants the licensee the authority to take legal actions against the infringement of intellectual property rights, with or without assistance of the rights owner, subject to conditions of the license agreement.
License agreements related to trademark, design and patent rights shall be executed for granting an exclusive or non-exclusive license. The license isn’t exclusive unless otherwise provided in the agreement. The licensor may use the trademark itself and issue licenses to third parties in case of non-exclusive license agreements. As for exclusive license agreements, the licensor shall not be entitled to grant license to third parties and it cannot use the trademark itself unless it explicitly reserves any such right.
(a) Criminal sanctions
In accordance with applicable regulations, anyone who wilfully or with gross negligence infringes a patent, a trademark, a design, a tradename, a typography for semiconductor producs, a copy right or a plant breeders’ right, or attempts to do so, shall be sentenced to fines or imprisonment for not more than two years.
(b) How to invoke
Regarding patents, trademarks, designs, tradenames and typographies for semiconductor products, actions for infringement may be brought by the public prosecutor only if the injured party files a complaint and a prosecution is called for in the public interest.
Actions due to infringements regarding copyrights and plant breeders’ rights may be brought by the public prosecutor if the injured party files a complaint or a prosecution is called for in the public interest.
(c) Protection of trade secrets
If anyone wilfully or without authorisation accesses a trade secret, or attempts to do so, he or she shall be sentenced for trade espionage to fines or imprisonment for not more than two years. If the offense is grave the punishment shall be no more than six years.
Furthermore, anyone who obtains a trade secret knowing that the person who makes available the secret, or anyone before him, has accesses it through trade espionage shall be sentenced for unauthorised tempering with trade secret to fines or imprisonment for not more than two years. Is the offence grave, the punishment shall be not more than four years.
PATENTS & UTILITY MODELS:
Unless otherwise agreed, the exclusive licensee may exercise in his/her own name all the actions against third parties that infringe such IP right.
In principle, non-exclusive licensees cannot enforce patent rights, but is entitled to request the patentee to bring actions. Absent any response from patentee or denial to bring actions (one month to respond), the non-exclusive licensee is entitled to enforce the patent rights.
The non-exclusive licensee may require the right holder to commence litigation. Should the patent owner refuse to bring actions (or just ignore such request) within a period of three months, the licensee may initiate it in his/her own behalf. Patent owner must be notified of these circumstance so it can join the action.
Licensees ‘rights in respect of the enforcement of the licensed registered trademark would be defined by the corresponding negotiated licence agreement.
Unless otherwise agreed, the holder of an exclusive license may exercise in his own name all the actions recognized to the trademark right owner against third parties that infringe the IP right.
The holder of a non-exclusive license, unless otherwise agreed, would not be entitled to bring infringement actions.
The licensee, who is not entitled to exercise infringement actions, may require the trademark owner to bring the corresponding legal action. If the trademark owner refuses or fails to exercise the appropriate action within a period of three months, the licensee may initiate it in his own name.
Prior to the expiration of the three months period, the licensee may request the judge to take urgent precautionary measures when he justifies the need for them to avoid material damage, with the filing of said request.
The licensee who exercises a judicial action must notify the trademark owner, who may appear and intervene in the proceedings, either as a party or as an intervenor.
Unless the license agreement provides otherwise, the licensee may only exercise in his own name the actions that are recognized to the design owner against third parties with the express authorization of the said design owner.
However, the holder of an exclusive license may reliably require the design owner to file the corresponding legal action.
If the design owner refuses or does not exercise the appropriate action within the period of three months, the exclusive licensee may initiate it in his own name, accompanying the request made. Prior to the expiration of this period, the licensee may request the judge to take urgent precautionary measures when the need for them in order to avoid material damages it is justified with the presentation of said request.
Both the licensor and the licensee who exercises an action shall notify each other of this circumstance. The design owner may appear and intervene in the procedure initiated by the licensee.
When the design owner exercises the action, the licensee shall also be entitled to intervene in the proceedings in order to claim the corresponding compensation.
The exclusive licensee may exercise in his/her own name infringement actions.
Non-exclusive licensee – Non-exclusive licensees cannot sue for patent infringement. However, in some circumstances, they can join a claim seeking compensation for damages suffered and unjust enrichment. When the license is non-exclusive / unique, the right to file a claim remains with the owner of the right and the licensee can join as a party to the proceeding.
Exclusive licensee – An exclusive licensee can sue for patent infringement, if the exclusive license has been registered in the patents register. A license that has not been registered is not binding on third parties.
The law does not relate to the distinction between licenses, but it is assumed that a unique license entitles the license holder to a right to file a claim. In a non-unique license, the right to file a claim remains with the owner, when the licensee can join as a party to the proceeding.
A claim of copyright infringement can be filed by the copyright holder. If a unique license is granted, then the licensee may file a claim as well.
Non-exclusive license – the license is granted to one or more licensee and does not precludes the holder from granting licenses to any other person and does not prevent the holder from using the mark.
Exclusive license – the license is granted only to one licensee and precludes the holder from using the mark and from granting licenses to any other person).
Sole license – the license is granted only to one licensee and precludes the holder from granting licenses to any other person but does not prevent the holder from using the mark.
An exclusivity clause is independent from clauses that estipulate enforcement possibilities in a licensing agreement. That is, either exclusive or non-exclusive licensees can have power to seek injunctions and sue for damages, it depends exclusively on the contract.