Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

Intellectual Property

Singapore Small Flag Singapore

Copyright/layout-designs (topographies) of integrated circuits – No requirement.

Registered designs/patents/plant varieties/trade marks – Until an application has been made for registration of the licence, the licence is ineffective as against a person acquiring a conflicting interest in the rights in ignorance of it.

Portugal Small Flag Portugal

R: As regards the IP rights ruled by the Portuguese Industrial Property Code the licence must be registered before the Portuguese Industrial Property Institute.

The consequences of failing to register before the Portuguese Institute it’s the fact that such licence cannot be enforced against any third parties.

India Small Flag India

Trade mark: While it is not mandatory to register a license of trade mark, it is advisable to do so.

Patent: An change in the title or interest in a patent must be recorded in the prescribed format before the Controller of Patents

Design: The procedure for recordal of the licence agreement is the same as that for the assignment agreement.

Greece Small Flag Greece

Please see above.

Japan Small Flag Japan

See 13. In the case of certain types of exclusive licenses, if a license is not registered, such exclusiveness of the license does not take effect.

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Consequence of failing to register

Patents

1) Original document or certified copy of the license
agreement.

2) Spanish translation (if required);

3) Recordal application stating forth:

I) Names and nationalities of both parties;

II) Invention’s details; and

III) Official fees paid.

The license agreement will not have legal effects against
third parties.

Utility models

Industrial designs

Integrated circuits

Trade secret

N/A

N/A

Brands

IP right

Requirements

Consequence of failing to register

Trademarks

1) Original document or certified copy of the license
agreement.

2) Spanish translation (if required);

3) Recordal application stating forth:

I) Names and nationalities of both parties;

II) Sign’s details; and

III) Official fees paid.

The license agreement will not have legal effects against
third parties.

Trade names

Slogans

Appellations of Origin

Since the authorization to use it is granted by the Mexican
Patent and Trademark Office, it is automatically
registered.

N/A

Copyright and other rights

IP right

Requirements

Consequence of failing to register

Copyright

1) Original document or certified copy of the assignment
agreement;

2) Parties’ IDs;

3) Spanish translation (if required);

4) Recordal application; and

5) Official fees paid.

The agreement will not be presumed valid.

Related rights

N/A

N/A

Reservation of rights

1) Original document or certified copy of the assignment
agreement;

2) Parties’ IDs;

3) Spanish translation (if required);

4) Recordal application; and

5) Official fees paid.

The license agreement will not have legal effects against
third parties.

Plant varieties

No need to register.

N/A

China Small Flag China

Unlike assignment, licence agreement registration is optional.

United Kingdom Small Flag United Kingdom

There is no mandatory requirement to register licences of IP rights under English law. However, it is prudent to do so because, until registered, the relevant transaction is ineffective against a third party who acquires a conflicting interest in the right in good faith. In relation to exclusive licences of patents and trade marks, if the licence is not registered within 6 months (or as soon as practicable thereafter), then if it were to be infringed by a third party, the failure to register in time may prevent the IP owner recovering costs in infringement proceedings.

There is no requirement to register a licence of copyright or other unregistered rights.

South Africa Small Flag South Africa

Patents and Designs
There is no general requirement that licences for patents must be registered in order to ensure their validity. However, in order for a licensee to be able to join patent enforcement litigation proceedings, for example, to claim damages, the licence must be registered on the official patent office register. The same principles apply to registered designs.

Plant Breeders’ Rights
The Registrar must be notified within 30 days of the issuance of a licence, and must be provided with a copy thereof. Failure to comply appears to have no consequences.

Trade Marks and Copyright
There is no obligation to register a licence in terms of the relevant Acts, but it is possible to record a trade mark licensee as a registered user.

Philippines Small Flag Philippines

As a general rule, voluntary license contracts or technology transfer arrangements that do not contain any of the prohibited provisions under Section 87 of the IP Code and which comply with the mandatory provisions in Section 88 need not be registered with the DITTB of the IPO. However, non-compliance with the said provisions would render the agreement unenforceable unless approved and registered by the DITTB by way of requesting for an exemption from the provisions of Sections 87 and 88. The DITTB, upon evaluation thereof on a case by case basis, may allow an exemption from the mentioned requirements in exceptional or meritorious cases where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board of Investments, registered companies with pioneer status.

Licenses over registrations of trademarks shall be recorded with the Bureau of Trademark of the IPO upon payment of the prescribed fee. Licenses not so recorded shall have no effect against third parties.

United States Small Flag United States

Registration or recordation of an assignment is not required for patents, trademarks, copyrights or trade secrets, but there are benefits of doing so for patents, trademarks and copyrights.

Germany Small Flag Germany

There is no requirement to register a licence of any German intellectual property rights. Registration is not required for a licence to be effective against third parties.

Switzerland Small Flag Switzerland

There is no requirement to register a licence except for guarantee marks and collective marks. In the other cases, if a licence is not registered, it is not enforceable in the event a third party has acquired rights to the intellectual property right.

Ukraine Small Flag Ukraine

License registration is voluntary and can be performed if the parties to the license agreement wish so.

Under Ukrainian legislation, a license becomes effective when it is signed by the parties.

Failing to register a license may lead to the following implications:

  • unfair acts and misleading of the counterparty by conclusion of two or more license agreements (both non-exclusive and exclusive license agreements);
  • conducting activities on the same territory by several business entities with the use of the similar license.

The registration of a license is possible with regard to registrable intellectual property objects such as trademarks, works of copyright, inventions and utility models, industrial designs, semiconductor topographies, and plant varieties.

Turkey Small Flag Turkey

Trademark, design and patent rights may be included in a license agreement and there is no obligation to register such agreements. Also, as it is indicated above, patent rights may be subject to compulsory licenses but there is no legal provision as to the registration of any court order or Board decision related to a compulsory license. The registration is of an explanatory nature in that the license right gains the status of reinforced personal right since registration allows such right to be alleged against third parties in goodwill.

Sweden Small Flag Sweden

See answer to 13 above. There is no sanction or other consequence for failing to register a license.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:
There is no requirement to register the assignment of the ownership of a patent. To be effective against third parties in good faith, patent assignments must be recorded before the SPTO. Non-recorded licenses are not opposable to third parties in good faith.

TRADEMARKS:
There is no requirement to register a licence over a registered trademark.

However, if the licence is not registered at the SPTO it may have no effect against third parties in good faith.

DESIGNS:
There is no requirement to register a licence over a registered design.

A license may only be opposed to third parties in good faith once registered in the Design registry.

COPYRIGHTS:
No specific consequence from a validity perspective.

Updated: July 12, 2017