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 (2nd edition)

France Small Flag France

Under French law, registration is not required for the validity of licence agreements.

However, enforcement of rights against third-parties is subject to registration. Indeed, a licence, whether exclusive or non-exclusive, may only give rights against third parties or against a later transaction concerning the same rights once registered.

In this way, as for assignment, the license shall be registered with the French Office by filling a specific form together with a copy of the license agreement, the relevant clauses or a confirmatory license signed by both party. If the license has been drafted in a foreign language, a French translation must be provided.

If the licence is not registered, the licensee (exclusive or non-exclusive) may join the infringement action initiated by the owner of the IPR in order to obtain compensation for his own prejudice.

See for:

  • patents: Article L.613-9 of the IPC;
  • designs : Article L.513-3 of the IPC;
  • trademarks: Article L.714-7 of the IPC.

It should be noted however that the Trademark European Directive together with recent case-law from the European Court of Justice tend to widen the conditions of the licensee’s action.

Switzerland Small Flag Switzerland

Only for collective marks. Failing to be registered, the licence on a collective mark will not be valid. Otherwise, there is no requirement to register the license. However, a non-registered license will not be opposable to third parties that are of good faith.

Poland Small Flag Poland

A licence concerning registered intellectual property rights may be registered with the Patent Office, but this is not required and does not affect the validity of the licence. However, registering an exclusive licence provides a benefit for the licensee to take action against third party infringements in the same way as the right holder, unless the licence agreement provides otherwise.

The licences concerning unregistered intellectual property (such as copyright and related rights) cannot be registered as no such official register exists.

Italy Small Flag Italy

Please see answer to question n.12, under section C.

Cyprus Small Flag Cyprus

For Patents (in case of compulsory license), Trade marks and Designs, license must be recorded, otherwise it is not actioned.

Israel Small Flag Israel

Trademarks:
An application for registration of a license shall be submitted by the licensee, as the case may be, or his representative, the following documents shall be attached thereto, and the payment shall be effected as follows:

  1. Deed or license agreement.
  2. Payment of a fee according to item 7 of the First addition to the Regulations, for each application for registration of a trade mark or a registered trade mark in respect of which an authority has been registered.
  3. A power of attorney from the licensee, to the extent that the request was submitted by his representative.

Approval by one of the parties of the agreement or confirmation by their representatives that, to the best of their knowledge, the license does not mislead the public. Alternatively, reference to the absence of such misleading can be done by way of reference to the fact that this also arises from the license documents.

Recording of a license in Israel with the ILTMO is mandatory as otherwise the use of the mark in Israel by the licensee may not be attributed to the owner of the trade mark, leading to possible non-use actions.

Chile Small Flag Chile

The Law requires that the license agreement of an industrial property right to be registered before de Patent and Trademark Office so that it has effects with respect to third parties. Thus, if the license agreement is not registered, it will not be effective against third parties.

In the case of intellectual property licensing contracts, the Law does not require that they be registered with the Intellectual Rights Department so that it can be effective against third parties, unlike what happens with a concession contract.

Greece Small Flag Greece

Recordal of an IP license is necessary in order for the licensee to claim and enforce its rights against third parties.

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.

Pakistan Small Flag Pakistan

It is not mandatory to register a licence. In case of non-recordal of license, both the licensor and licensee may have to produce other supporting evidence to demonstrate their relationship in case of any action concerning the IP right.

Ecuador Small Flag Ecuador

Yes, the license agreement must be presented before the competent authority- SENADI- it will analyse that the clauses are legal.

United States Small Flag United States

Registration or recordation of a license is not required for patents, trademarks, copyrights or trade secrets, but there are benefits to doing so.

Malaysia Small Flag Malaysia

Not mandatory.

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.

Japan Small Flag Japan

Registration is basically not required for a license of intellectual property rights. However, no grants of “exclusive registered licenses” of patents, utility model rights, trademark rights and design rights take effect until such grant is registered.

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

·  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.

Designs

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

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

Geographical Indications

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

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.

Sweden Small Flag Sweden

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

Latvia Small Flag Latvia

Patents - In relation to third persons, the licence contract shall come into force following the registration thereof in the Patent Office. A State fee shall be paid for the registration of the licence contract.

As there is no legal requirement to register a license agreement in respect of trademarks and designs in Latvia, the fact that the information about a licensing agreement is not entered in the Register or is not published, does not constitute grounds for opposing the validity of a trade mark/design or for opposing the right of a licensee to intervene in an action for trade mark/design infringement instituted by the owner of the trade mark/design or for opposing the right of a licensee to receive compensation for the damages caused by unlawful use of the licensed trade mark/design.

Copyright (including database rights) – No.

Vietnam Small Flag Vietnam

The rights to registered trademark may be lost or invalidated due to the principle indicated at question 13 above. Specifically, even if a registered mark has been legally used by a licensee or others with the permission of the trademark owner through a unregistered license trademark agreement, the evidence of use of the registered mark by the licensee or that person would not be accepted if such license trademark agreement had not been recorded with the NOIP prior to the date of submission of invalidation request by third party.

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.

Malta Small Flag Malta

For all registered IPRs, Maltese law requires that a licence is registered in order to have effect vis-à-vis third parties.

Updated: August 2, 2018