What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?

Intellectual Property

Singapore Small Flag Singapore

Generally, the legal owner of the intellectual property rights in question will have the right to licence them to a third party. In this regard, the licence must be in writing, and must be signed by or on behalf of the grantor. Otherwise, the licence is not effective. Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the relevant register of patents, trade marks, registered designs and plant varieties.

France Small Flag France

Patent licences must be in writing on pain of nullity (ICP art. L.613-8).

Trademark and design licences need not to be in writing although a written document may be required for considerations of evidence.

Regarding copyright a written licence is recommended considering the importance of mandatory clauses.

Portugal Small Flag Portugal

R: A written document between the Licensor and the Licensee is the only requirement to licence a third party to use each of the intellectual property rights described in section A.

India Small Flag India

Patents: A patentee may license his rights through a license agreement, exclusive or otherwise in favour of any person. The agreement must be in writing and duly executed as per national laws.

Trademark: Regarding proceeding with the license recordal in India, please note the following documentary and procedural requirements:

  1. A Joint Application is to be filed with the Registrar of Trade Marks in writing within 6 months from the date of the agreement along with the agreement or duly authenticated copy (notarized) of it with respect to the permitted use of the trade mark.
  2. An Affidavit made by the registered proprietor or on his behalf giving particulars of the license arrangement.
  3. A Power of Attorney signed in favor of the agent. The same need not be notarized or legalized.

An unregistered mark cannot be licensed.

Copyright: The owner of the Copyright in any existing or future work may grant any interest in the work by way of license. A copyright license may be exclusive or nonexclusive. As regards the future works the license shall take effect only when the works comes into existence. For a license to be valid it must be in writing and signed by either the owner or his duly authorized agent. And where a person to whom a license relating to copyright in any future work dies before the work comes into existence, his legal representative shall be entitled to the benefit of the license. A license may be voluntary or compulsory.

Designs: The registered proprietor of a design may license his rights through a license agreement.

Greece Small Flag Greece

Please see above.

Japan Small Flag Japan

In principle, licences require no formalities. However, in the case of certain types of exclusive licenses, i.e., exclusive licences to use the rights (senyo- jisshi-ken or senyo-shiyo-ken) for patents, utility model rights, trade marks and design rights, registration with the JPO is required for the license to take effect.

China Small Flag China

Intellectual property licences, such as copyright, trademark, know-how and patent licences must be in writing and clearly set out the rights and subject matter.

United Kingdom Small Flag United Kingdom

There are no statutory formalities for licences under English law. In particular, there is no formal requirement for a licence to be in writing, and a licence may be implied through the parties' commercial agreements and dealings, or may be express.

In practice though, it is highly advisable for licences to be in writing in order to confer certainty about their terms and to enable the licensee to have the benefit of registration. In addition, for a licence to be valid, it must comply with usual English law contractual formalities, such as offer, acceptance, intention to create legal relations, and consideration.

South Africa Small Flag South Africa

Patents and Designs
There are no formal requirements for a valid licence agreement insofar as a patent is concerned. There must merely be agreement between the patentee, or an otherwise authorised party, and the licensee, conferring authority on the licensee to carry out one or more of the acts otherwise reserved exclusively for the patentee. The same principles apply to registered designs. Parties have contractual freedom in South Africa.

Plant Breeders’ Rights
None, the parties have contractual freedom in South Africa.

Trade Marks and Copyright
The relevant Acts do not specify any requirements for a licence. Accordingly, an unwritten licence would be permissible.

UAE Small Flag UAE

Rights

Requirements for a license agreement to be valid

Requirement to register a license with the Ministry of Economy

Consequences if no registration

Patents (national) and utility certificates
Designs

In writing and signed by both parties

Notarised (and Legalised where notarised outside the country)

YES

A license shall "not come into force" until it is registered and published in the industrial property journal.

The licensee will not be entitled to enforce its licensed rights against third parties where the licence is not recorded.

This could mean for the owner, that the patent may be vulnerable to compulsory licensing if the licensee's exploitation does not accrue to the patent holder, if the only exploitation is by the licensee.

Patents (GCC)

In writing and signed by both parties

Notarised (and Legalised where notarised outside the country)

YES

The licence will not be effective until it has been recorded in the register.

The licensee will not be entitled to enforce its licensed rights against third parties where the licence is not recorded.

This could mean for the owner, that the patent may be vulnerable to compulsory licensing if the licensee's exploitation does not accrue to the patent holder, if the only exploitation is by the licensee.

Trade marks

In writing signed by both parties

Notarised (and Legalised where notarised outside the country)

licenses can only be recorded against registered marks

The licence may not exceed the period of protection for the trade mark.

YES

The licence is not effective against others until it has been recorded in the register and published.

This means for the owner, that the trademark may become vulnerable to cancellation if the only use is by the licensee.

For the licensee, this means it will not be entitled to enforce its licensed rights in the trade mark against third parties.

Copyrights and neighbouring rights

Same principles as those applicable to copyright assignments (the Copyright Law deals with transfer of rights without differentiating copyright assignments and licenses).

NO

See copyright assignments

N/A

Philippines Small Flag Philippines

Licensing for Patents, Industrial Design and Lay-out design
There are two ways to license patents, industrial designs and lay-out designs to a third party in the Philippines, namely, through (a) voluntary licensing and (b) compulsory licensing.

Voluntary licensing encourages the transfer and dissemination of technology while preventing or controlling the practices and conditions that would constitute an abuse of intellectual property rights. It is mandatory for all voluntary license contracts to contain the following provisions: (a) that the laws of the Philippines shall govern the interpretation of the contract and in the event of litigation, the venue shall be the proper court where the licensee has its principal office; (b) that continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; (c) that should the technology transfer arrangement provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce shall apply and the venue of the arbitration shall be the Philippines or any neutral country; and (d) that Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor.

Voluntary license agreements should also not contain the following prohibited clauses under Section 87 of IP Code:

“Section 87. Prohibited Clauses. - Except in cases under Section 91, the following provisions shall be deemed prima facie to have an adverse effect on competition and trade:

87.1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor;

87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume and structure of production;

87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement;

87.5. Those that establish a full or partial purchase option in favor of the licensor;

87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology;

87.7. Those that require payment of royalties to the owners of patents for patents which are not used;

87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted;

87.9. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee;

87.10. Those which require payments for patents and other industrial property rights after their expiration, termination arrangement;

87.11. Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier;

87.12. Those which restrict the research and development activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate research and development programs in connection with new products, processes or equipment;

87.13. Those which prevent the licensee from adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor;

87.14. Those which exempt the licensor for liability for non-fulfilment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and

87.15. Other clauses with equivalent effects.”

Under compulsory licensing, the Director General of the IPO may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of a third person who has shown his capacity to exploit such invention. Compulsory license may only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. A compulsory license may be granted, even without efforts to obtain license on reasonable commercial terms, on the following grounds: (a) national emergency or other circumstances of the extreme urgency; (b) where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government, so requires; (c) where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive; (d) in case of public non-commercial use of the patent by the patentee, without satisfactory reason; (e) if the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason; or (f) where the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.

The IP Code likewise grants special compulsory licenses to the following: (a) special compulsory license under the TRIPS Agreement upon written recommendation of the Secretary of the Department of Health and upon filing of a petition; (b) compulsory license of patents involving semi-conductor technology in case of public non-commercial use or to remedy a practice judicially or administratively determined to be anti-competitive; and (c) compulsory license based on interdependence of patents where it may be granted to the owner of the second patent to the extent necessary for the working of his invention so long as the second patent involves an important technical advancement of considerable economic significance in relation to the first patent and that the owner of the first patent is entitled to a cross-license on reasonable terms to use the invention claimed in the second patent.

Licensing for Trademarks, Service Marks and Tradenames
Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. Otherwise, the license contract shall be invalid.

A license contract shall be submitted to the IPO's Documentation, Information and Technology Transfer Bureau (“DITTB”) which shall keep its contents confidential but shall record it and publish a reference thereto. It shall have no effect against third parties until such recording is effected However, It shall be recorded only upon certification by the DITTB Director that the agreement does not contain any of the prohibited clauses and complies with all the mandatory provisions in Sections 87 and 88 of the IP Code, respectively.

Section 4.3 of the IP Code defines “technology transfer arrangements” as “contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market.”

Generally, registration of a technology transfer arrangement with the IPO is not required, provided that it does not contain any of the prohibited clauses enumerated in Section 87 of the IP Code and it contains the mandatory provisions enumerated in Section 88 thereof. However, if the technology transfer arrangement does not comply with Sections 87 and/or 88 of the IP Code, the technology transfer arrangement must be registered with the DITTB. Otherwise, the agreement shall be unenforceable (Section 92, IP Code) unless a request for exemption from the provisions of Sections 87 and 88 is filed with the DITTB.

Unenforceability, in this context, has been interpreted to mean that neither party will be allowed to have any legal recourse against the other in court in case of breach of contract. Under the Civil Code of the Philippines, contracts deemed “unenforceable” are considered valid and binding as between the parties who entered into it. However, in case there is a breach of the contract, neither party can go to court to enforce the contract’s terms. Further, the Civil Code provides that an unenforceable contract is valid between the contracting parties, but may not be invoked against third persons.

The registration of a collective mark or an application therefor shall not be the subject of a license contract.

Licensing for Copyright
A copyright may be licensed in whole or in part. The copyright is not deemed licensed inter vivos in whole or in part unless there is a written indication of such intention. The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. Any exclusivity in the economic rights in a work may be exclusively licensed.

United States Small Flag United States

(a) Patents, Trademarks and Trade Secrets
A license must comply with the general contract rules including the requirements for mutual assent, consideration, legal purpose and legally competent parties. A license agreement need not be in writing, but there are advantages to a written license agreement.

(b) Copyrights
Grants of exclusive rights must be in writing, but grants of non-exclusive rights are not required to be in writing.

Germany Small Flag Germany

No special form is required for a patent licence; but licences should be recorded in writing for reasons of evidence. For utility models and topography rights, the same principles apply.

There are also no formal requirements for licences of trade marks and design rights under German law. Company names cannot be licenced under German law. It is controversial whether work titles can be licenced themselves or only in connection with the work.

For copyright licences, there are no formal requirements, with the exception of licences covering future works that are not specified, or are only referred to by type. These must be in writing to be valid.

There are no formal requirements for know-how licences either.

No special form is required for a plant variety licence, Section 11 Act on the Protection of Plant Varieties.

Switzerland Small Flag Switzerland

There are no specific requirements. Even though no formalities are required, a written agreement is recommended.

Ukraine Small Flag Ukraine

The issue of license to use intellectual property rights is conducted on the basis of license agreement. The license agreement should be concluded in written form and should contain essential conditions such as scope of rights, term of license, territory, type of license, payment conditions etc. The license can be an exclusive, non-exclusive or individual.

As regards trademark licenses, its essential conditions should contain obligation to control the quality of the goods / services produced by the licensee (i.e. the quality shall correspond the quality of the licensor’s goods / services).

The trade name can be licensed within the framework of franchising agreement or in certain cases, within the framework of a complex licensing of intellectual property rights.

Turkey Small Flag Turkey

Trademark rights may be documented in an exclusive or non-exclusive license agreement for all or part of the commodities or services that are registered under such trademark. Unless otherwise provided in the agreement, the license shall not be exclusive and the license holders shall not be entitled to assign or sub-license their rights arising from the license to third parties. Limitations to the use of trademark rights by third parties shall be determined according to the license agreement.

Design rights may constitute the basis of license agreements just as trademark rights.

While patent rights may be documented through a license agreement just as the trademark rights, IPL also sets forth the conditions where compulsory license shall be issued for a patent. In the event that any license is granted through an agreement, the licensor shall be obliged to provide the licensee with the technical information required for the normal use of the invention subject to the patent. Licensee, on the other hand, shall be obliged to protect the confidentiality of the confidential information disclosed to it. The owner of the patent application or patent may notify the fact that it intends to issue licenses to everyone for the invention subject to the patent through a written request it shall submit to the Authority upon which the proposal to grant licenses shall be announced in the Bulletin. Nevertheless, if there appears any exclusive license in the registration, the owner of the patent application or patent cannot offer to issue licenses to third parties. Compulsory licenses are not exclusive in principle, however compulsory licenses issued for public benefit may be exclusive. It is not possible to assign or sub-license a compulsory license. Also, if any person benefiting from a project supported by public institutions and organizations claims title to the rights on the invention, the relevant public institution or organization shall hold a free license right for the use of the invention for its own requirements according to IPL.

Sweden Small Flag Sweden

(a) Patents, trademarks, trade names, designs, plant variety rights
As described under B above, patents, trademarks, trade names, designs and plant variety rights are registered rights and may be licensed. This may be done by way of any agreement valid under Swedish law. The registers for each right may be update to reflect licensing of a right, however this is not a requirement.

Trade names may not be licensed under Swedish law.

(b) Copyright and topographies for semiconductor products
Copyright and topographies for semiconductor products may be licensed. This may be done by way of any agreement valid under Swedish law. As there is not registration for these rights no update may be performed.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:
Patents can be licensed for all or part of the Spanish territory, in its entirety or in one of the faculties that make up the exclusive right, for all or part of its possible applications. Licenses may be exclusive or non-exclusive.

When performed inter vivos the license agreement must be written in order to be valid.
Unless otherwise agreed, the license is not exclusive and the grantor may grant other licenses and exploit the design itself.

The exclusive license prevents the granting of other licenses and the grantor of the license can only exploit the design if the contract has expressly reserved that right.

Unless otherwise agreed, the licensee shall be entitled to exploit the patent throughout the duration of the registration, including renewals, throughout Spain and for all applications.

The holder of a license may not assign it to third parties or grant sub-licenses, unless otherwise agreed.

Licensor should also license the technical know-how required to exploit the invention.

Licensor can enforce its exclusive rights against licensees breaching the terms of the license.

TRADEMARKS:
Both the application and the registered trademark may be licensed on all or part of the products and services for which it is registered and for all or part of Spanish territory. Licenses may be exclusive or non-exclusive.

The holder of a license may not assign it to third parties, nor grant sub-licenses, unless otherwise agreed.

Unless otherwise agreed, the holder of a license shall be entitled to use the mark for the entire duration of the registration, including renewals, throughout the national territory and in respect of all goods or services for which the mark is registered.

Unless otherwise agreed, that the license is not exclusive and that the licensor may grant other licenses and use the trademark by himself.

When the license is exclusive, the licensor may only use the trademark if the contract has expressly reserved that right.

DESIGNS:
Both the requested design and the registered design may be licensed, for all or part of the Spanish territory, in its entirety or in one of the faculties that make up the exclusive right, for all or part of its possible applications. Licenses may be exclusive or non-exclusive.

When performed inter vivos the license agreement must be written in order to be valid.

Unless otherwise agreed, the license is not exclusive and the grantor may grant other licenses and exploit the design itself.

The exclusive license prevents the granting of other licenses and the grantor of the license can only exploit the design if the contract has expressly reserved that right.

Unless otherwise agreed, the licensee shall be entitled to exploit the design throughout the duration of the registration, including renewals, throughout Spain and for all applications.

The holder of a license may not assign it to third parties or grant sub-licenses, unless otherwise agreed.

COPYRIGHTS:
Copyrights may be licensed, explicitly establishing the rights that are being licensed. The agreement must be in writing and should specify the duration and the territorial scope of the license. The license can be exclusive as well as non-exclusive.

Israel Small Flag Israel

There is an obligation to register the licence if it is exclusive. In addition, exclusive license must be given in writing.

Updated: August 23, 2017