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

Intellectual Property (2nd edition)

France Small Flag France

i. Patent
As for patent assignment, patent licences must be in writing failling which of nullity (Article L.613-8 of the IPC). It may be sole, exclusive or non-exclusive. The parties can also decide to set a limited term to the agreement.

ii. Trademark
Contrary to patent a written licence agreement is not mandatory although it may be required for considerations of evidence.

Different types of trademark license exist under French law.

A trademark license may either concern the entire trademark or be limited to specific goods or services. It may be sole, exclusive or non-exclusive and apply for a reduced/limited term.

iii. Designs
A design may be licensed either in whole or in part, for a limited term. A design license does not require a written document, although it may be recommended for considerations of evidence.

iv. Copyright
A copyright work can be licensed either in whole or in part. However, only patrimonial rights attached to copyright work may be licensed to the exclusion of moral rights which are non-transferable (Article L121-1 of the IPC). The license can be sole, exclusive or non exclusive and can apply for a reduced/limited term.

As for assignment, a written agreement is highly recommended considering the importance of mandatory clauses and to define precisely the assigned rights in terms of scope and purpose, territory and duration ( Article L.131-3 of the IPC).

Switzerland Small Flag Switzerland

There is no formal requirement for the licence, which may even be concluded orally. However, a written agreement is advisable for evidence purposes and to avoid possible interpretation disputes.

Poland Small Flag Poland

For registered IP rights, such as patents, utility models, trade marks, semiconductor topographies, the licence agreement has to be in writing or will otherwise be invalid.

A copyright licence agreement is only required to be in writing if the licence is exclusive. Non-exclusive licences may be granted in any form. The same rules apply to performers' rights.

Italy Small Flag Italy

As for the assignment also for licensing IP rights, Italian law does not require any specific procedure or formal requirement, but normally it is made in writing, also for the purpose of evidence.

Cyprus Small Flag Cyprus

Patents (and SPCs)
There is no provision for recording of voluntary licenses but it is highly recommended to conduct a license agreement in writing in order to license a third party to use a patent.

There is a provision for grant of a compulsory license under a patent. The law provides that any person at any time after the expiration of four years from the date of grant of a patent can apply to the Registrar on any of the following grounds:

  1. The patented invention, though capable of being worked commercially in Cyprus, is not so worked or not so worked to the fullest extent being reasonably practicable.
  2. The patented invention is a product and a demand for that product in Cyprus is not met or not met on reasonable terms.
  3. By reason of refusal of the owner of the patent to grant a license upon reasonable terms, a market for the export of any patented product made in Cyprus is not being supplied, or the working or efficient working in Cyprus of another patented invention which makes a substantial contribution to the art is prevented or hindered, or the establishment or development of commercial or industrial activities in Cyprus is unfairly prejudiced
  4. The manufacture, use or disposal of materials not protected by the patent, or the establishment or development of any commercial or industrial activities within Cyprus, is unfairly prejudiced by conditions attached by the owner of the patent to the grant of licenses thereunder or to the disposal or use of the patented product or the using of the patented process.

Trade marks
The application for registration of a person as registered user must be made jointly by the proprietor and the registered user of the trade mark and accompanied an affidavit sworn by the proprietor of the trade mark which must state the particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, the degree of control by the proprietor over the permitted use, whether the proposed registered user will be the sole registered user or whether there will be others, the mark or marks in respect of which the application is made, any conditions or restrictions proposed as regard to characteristics of goods, mode or place or permitted use or to any other matter, whether the permitted use is to be for an indefinite or a limited period and if the latter, its duration and any other documents, information or evidence the Registrar may require.

Copyrights
An exclusive license must be granted in writing and it is possible to give license for a future work. A non-exclusive license can be given in written, orally or by conduct of the parties.

Industrial designs
An application for registration of a license may be made by licensor or licensee and must be accompanied by the original or certified copy of the agreement and any other documents that confirm the authority of each party to enter into the agreement. The signatures of the parties must be notarized. In certain cases, the court may grant compulsory licenses for designs.

Israel Small Flag Israel

In order for any license to be valid against third parties, the license should be registered by filing a suitable request supported by the license agreement.

Chile Small Flag Chile

In the case of all the intellectual property rights indicated above, the license agreement must consist, of at least of one private instrument.

Greece Small Flag Greece

In general, all intellectual property rights can be freely licensed, exclusively or non- exclusively, following a written agreement. The law on patent protection also provides the possibility of the grant of compulsory licences under certain circumstances explicitly mentioned in said law.

United Kingdom Small Flag United Kingdom

There are no statutory formalities for licences under English law other than a requirement in respect of UK Trade Marks that the licence is in writing and signed by the licensor.

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 (where relevant). 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.

Pakistan Small Flag Pakistan

A right holder may license its rights through a license agreement, exclusive or otherwise in favour of any third party. The agreement must be in writing and duly executed by the grantor.

Ecuador Small Flag Ecuador

The requirements are just an agreement between the parties with clauses that are not abusive and allow a mutual benefit.

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.

Malaysia Small Flag Malaysia

Must be in writing.

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.

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.

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.

Latvia Small Flag Latvia

Copyright (including database rights) – All licences shall be issued in writing however a licensing agreement may be entered into either orally or in writing except the following licensing agreements which shall be entered into in writing: a publishing contract; a contract for the communicating to the public of a work; a contract for creating an audio-visual work; a contract specifying such rights as are included in a compulsory licence or an exclusive licence.

Vietnam Small Flag Vietnam

It is not mandatory for licensee and licensor to register a license contract for IP rights regarding patents, trademark, copyright and related rights, and plant variety with the State authorities. However, general principle at Section 148(2) of the IP Law provides for that an industrial property object license contract shall be valid as agreed upon by the parties involved but shall be legally effective as against a third party merely upon registration with the State administrative body for industrial property rights.

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.

Malta Small Flag Malta

In order to licence any of the IPRs to a third party, there has to be an agreement in writing signed by the parties. In the case where an IPR is granted to two or more persons jointly, the consent of all co-owners is needed in order to grant a licence. With regard to patents, if the proprietor files a statement with the IPRD in which he states that he is prepared to allow any person to use the invention as a licensee in return for appropriate compensation, the maintenance fees which fall due after receipt of the statement may be reduced. Licences may be granted limitedly – for example limiting territorial use.

Specifically with regard to registered designs, in the case of the grant of a licence under a registered design, the following details must be entered into the register:

  1. the name and address of the licensee,
  2. where the licence is limited, a description of the limitation,
  3. where the licence is an exclusive licence, that fact,
  4. the duration of the licence if the same is or is ascertainable as a definite period, and
  5. the date on which the entry is made.

Updated: August 3, 2018