What are the requirements to licence a third party to use each of the intellectual property rights described above?

Intellectual Property (2nd edition)

Japan Small Flag Japan

No formality, including registration, is required in order to license intellectual property rights to a third party, with the exception of “exclusive registered licenses” as set forth in, for example, §77 of the Patent Act, which are required to be registered to take effect under the Utility Model Act, Trademark Act and Design Act, as well as the Patent Act.

UAE Small Flag UAE

N/A

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Patents

Written agreement stating the following information:

1)  Parties’ contact details;

2)  Invention’s details;

3)  If the license will be exclusive or not;

4)  If the licensee will be able to initiate legal actions for a possible infringement or rights;

5)  Validity term not exceeding the IP right term.

Utility models

Industrial designs

Integrated circuits

Trade secret

Written agreement stating the following information:

1)  Parties’ contact details;

2)  Trade secret’s details;

3)  Measures or mechanisms to keep the confidentiality of the information;

4)  Validity term.

Brands

IP right

Requirements

Trademarks

Written agreement stating the following information:

1)   Parties’ contact details;

2)   Invention’s details;

3)   If the license will be exclusive or not;

4)   If the licensee will be able to initiate legal actions for a possible infringement or rights;

5)   Validity term.

Trade names

Slogans

Appellations of Origin

 

Written application filed before the Mexican Patent and Trademark Office. Such application shall meet the following additional requirements:

1)   The applicant’s activities shall be related to extraction, production and manufacturing of the products covered by the appellation of origin;

2)   That such activities shall be conducted inside the area that the appellation of origin covers;

3)   All other requirement stated by both the Ministry of Economy and the appellation of origin.

Geographical Indications

Copyright and other rights

IP right

Requirements

Copyright

Written license agreement stating the following information:

1)  Parties’ contact details;

2)  Copyright’s details;

3)  Validity terms; and

4)  Agreed remuneration.

Related rights

N/A

Reservation of rights

Written license agreement (signed by both parties) stating forth:

1)  Names and nationalities of both parties, and

2)Reservation of rights’ details.

Plant varieties

Written license agreement (signed by both parties) stating forth:

1)  Names and nationalities of both parties, and

2)  Plant varieties’ details.

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. The parties must agree on all the term and conditions including the rate of payment of royalties governing their rights and obligation in respect of the agreement. The agreement is registered by filing relevant form with the patent office.

In failure of Non-registration of this, the transferred patent right would be considered inadmissible as Evidence in the Indian Court and therefore not enforceable in legal proceedings.

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, which has to be in writing and shall be duly registered with the controller within six months from its execution or such further period as may be allowed by the controller.

Updated: June 15, 2018