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

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

Must be in writing signed by or on behalf of the contracting parties.

Norway Small Flag Norway

There are no specific requirements on licencing an intellectual prop¬erty right pursuant to Norwegian law.

Singapore Small Flag Singapore

A licence of a registered trade mark is not effective unless it is in writing and signed by or on behalf of the licensor. There are no special requirements for the licensing of any of the other intellectual property rights.

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Patents

Written agreement stating:

1)            Names, addresses and nationalities of the parties;

2)            Details of the invention;

3)            Indication as to if the license will be exclusive or non-exclusive;

4)            Indication as to if licensee will be authorized to initiate legal actions for defending the licensed rights against infringement;

5)      Term of the license.

Utility models

Industrial designs

Integrated circuits

Trade secret

Written agreement stating:

1)     Names, addresses and nationalities of the parties;

2)     Details of the trade secret, for identification purposes;

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

4)     Term of the license.

Brands

IP right

Requirements

Trademarks

Written agreement stating the following information:

6)            Names, addresses and nationalities of the parties;

7)            Details of the trademark;

8)            Indication as to if the license will be exclusive or non-exclusive;

9)            Indication as to if licensee will be authorized to initiate legal actions for defending the licensed rights against infringement;

10)         Term of the license.

Trade names

Slogans

Trade dress

Certification marks

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)         Names, addresses and nationalities of the parties

2)         Details of the Copyright;

3)         Term of the License; and

4)         Agreed royalties.

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)Details of the Reservation of Rights.

Plant varieties

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

1)        Names and nationalities of both parties, and

2)        Details of the Plant variety.

 

China Small Flag China

A licence contract.

Ecuador Small Flag Ecuador

A licence agreement between the parties which estates that it is not abusive and allows a mutual benefit for both parties.

South Africa Small Flag South Africa

There are no specific requirements.

Cyprus Small Flag Cyprus

The Patent Law does not provide any conditions and/ or formalities for the grant of a license over a patent. Any licenses may be created pursuant to a contractual arrangement between the patent holder and a licensee. The said law however, does provide for compulsory licenses which may be granted by the Registrar pursuant to a relevant application by any person, once 4 years have lapsed from the date of filing of the patent application (or any other period determined by the Registrar). In order for a compulsory license to be granted, one of the reasons set down in the said law must be fulfilled. These reasons include the following:

- When the patent may be industrially applied in Cyprus however, it is not used satisfactorily or it is not being used in the full extent that it is logically possible;
- When the patented invention is a product for whose demand in Cyprus is not met or it is not met reasonably;
- Due to the refusal of the patent holder to grant license(s) with reasonable terms, the patented product which is manufactured in Cyprus is not exported.

A trade mark may be licensed to another pursuant to a license agreement and such license must be notified to the Registrar in writing via a petition in a specified form to be submitted by the right holder and the proposed licensed user, along with an affidavit made by the right holder, which would contain the following: details of the extent of the license, whether the license is an exclusive one or not, any other condition regarding the persons who may submit an application to be registered as licensed users, details of the goods/ services that the license relates to, licensing period, any other terms regarding the license such as territory that the license applies to, etc.

As regards the grant of an exclusive license regarding copyright, this has to be in writing. Any non-exclusive license over copyright may be created pursuant to either an oral or a written agreement, or may be gleaned from the conduct of the parties.

Α design may be licensed pursuant to a license agreement which is granted for a consideration for a limited period of time. The said license is registered in the Register of Designs and is published in the Official Gazette of the Republic, unless the contrary is agreed. Any license granted cannot be exclusive, it cannot be assigned and cannot be inherited. The registration application must be accompanied by the license agreement, along with the documents which confirm the capacity of the contracting parties. The genuineness of the signatures of the licensor and the licensee must have been certified in accordance with applicable legislation.

Japan Small Flag Japan

There are no requirements for granting an ordinary license (including an exclusive ordinary license) to a patent, utility model, design or trademark or for granting a license to a copyright to a third party.

On the other hand, to grant an exclusive registered license to a patent, utility model, design or trademark to a third party, registration of the license is required. The license is not effective unless it is registered.

Switzerland Small Flag Switzerland

There is no formal requirement for the provision of a licence, i.e. license agreements may also be concluded orally. However, a written agreement is advisable for evidence purposes and to avoid possible interpretation disputes. This is especially the case as license agreements are innominate contracts.

Brazil Small Flag Brazil

Licensing agreements can even be made orally, although it is not advisable. Despite that, according to the Brazilian Civil Code, the validity of any contract depends on three general rules: (i) capable agents, (ii) licit, possible, determined or determinable purpose, and (iii) form provided or not prohibited by law.

It must be noted that Know-How cannot be licensed in Brazil. The BPTO understands that, once the agreement is terminated, the Brazilian company may continue to freely use the know-how, once it has acquired the knowledge of the transmitted know-how.

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.

Israel Small Flag Israel

Patents: There are no requirements in the law concerning non-exclusive licenses. An exclusive license must be recorded for the exclusive licensee to assert the patent against third parties.

Trademarks: For the licensee to be regarded as an authorized user, such license must be recorded in the Israeli trademark register. For such recording, the TMO requires a certified copy of the license agreement or a confirmatory short form of it as well as a formal confirmation by either the licensor or licensee that the license recordal is unlikely to mislead the public.

Designs: An agreement for granting an exclusive design license must be in writing and should be recorded at the Patent Office to be valid against third parties.

Copyright: Assignment of copyright ownership or for granting an exclusive license for it must be in writing.

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.

France Small Flag France

Patent

As for patent assignment, patent licences must be in writing, failing which, the patent licences is null (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.

Supplementary protection certificates

The licensing of supplementary protection certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

Utility certificates

The licensing of utility certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

Plant varieties

The licensing of plant varieties certificates must meet the same conditions as for patents (Article L.623-24 of the IPC).

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.

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.

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).

Semiconductors

The licensing of semiconductors rights must meet the same conditions as for patents (Article L.622-7 of the IPC).

Italy Small Flag Italy

Although Italian law does not require any specific procedure or formal requirement, licenses of IP rights are made in writing for the purpose of evidence and to be recorded with the IPTO.

Sometimes the intra-group license may be agreed orally.

Peru Small Flag Peru

(a) Inventions:

Patents, industrial designs, utility models:

The owner of a patent, industrial design or utility model granted or in the process of being granted may give license to one or more third parties for the exploitation of the respective invention.

Any operating license must be registered with the competent national office of a granted patent, industrial designs or utility models. Failure to register will cause the license not to be effects against third parties.

For the purpose of registration, the license must be in writing.

Any interested person may request the registration of a license.

In case of any change regarding the name or address of the owner of the patent, industrial design or utility model during the term of the license agreement, the owner of the registration must inform it to the competent national office. Otherwise, any notification made in accordance with the data appearing in the registry, will be considered valid.

(b) Trademarks:

The owner of a trademark registered or in the process of registration may give license to one or more third parties for the exploitation of the respective trademark.

Any license to use the trademark must be registered before the competent national office.

The lack of registration will cause the license to have no effect against third parties. For the purposes of registration, the license must be in writing.

Any interested person may request the registration of a license.

(c) Copyrights

The holder of economic rights may also grant to third parties a simple, non-exclusive and non-transferable use license, which shall be governed by the stipulations of the respective contract and those pertaining to the assignment of rights, as long as they are applicable.

The contracts of license of use, and any other authorization granted by the right holder, must be made in writing, except in the cases in which the law presumes the assignment between alive of such rights.

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:

(i) the name and address of the licensee,

(ii) where the licence is limited, a description of the limitation,

(iii) where the licence is an exclusive licence, that fact,

(iv) the duration of the licence if the same is or is ascertainable as a definite period, and

(v) the date on which the entry is made.

India Small Flag India

Patents: A patentee may license his rights through a license agreement, exclusive or otherwise in favour of any person.

Trademark: Regarding proceeding with the license recordal in India, please note the following documentary and procedural requirements: A Joint Application is to be filed with the Registrar of Trademarks 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 trademark. An Affidavit made by the registered proprietor or on his behalf giving particulars of the license arrangement. 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 non-exclusive.

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.

Saudi Arabia Small Flag Saudi Arabia

License to use requires a written agreement clearly stipulating the scope of license. The terms of license shall not exceed the scope of rights provided by the law and shall not be anti-competitive.

Australia Small Flag Australia

Any type of intellectual property can be licensed in Australia. The terms of the licence are generally at the discretion of the parties and governed by the law of contract. It is best practice to have the terms of the licence set out in writing and signed by the parties. There are no statutory requirements to licence, although:

  1. Patent licence agreements are regulated by the Patents Act 1990.
  2. Trade mark licence agreements are regulated by the Trade Marks Act 1995.
  3. Copyright licensing is regulated by the Copyright Act 1968.

Importantly, conduct involving intellectual property rights, including licensing, will be subject to the anti-competitive conduct prohibitions in Part IV of the Competition and Consumer Act 2010 from 13 September 2019.

It is worth noting that Australian law distinguishes between licences and franchises.

United States Small Flag United States

Under U.S. law, there are no formal requirements for a license of IP.  Licenses can be granted both in writing and orally.  Moreover, licenses can be implied in certain circumstances based on the conduct of the parties.

Different types of IP may also require specific provisions.  With respect to trademark licenses, the license must generally include provisions providing for quality control of the licensee’s products.  Failure to provide for adequate quality control can result in a “naked license,” which can lead to loss of trademark rights.  Agreements involving trade secrets obviously need to include confidentiality provisions to maintain the trade secret.  Most licenses will also include provisions regarding consideration, scope of the license (products and territories), termination, etc.

Updated: September 12, 2019