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)

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.

Updated: June 15, 2018