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

Updated: June 27, 2017