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Intellectual Property Assignment

About the Rights

The owner has the right to possess, use and dispose of his property.

Co-owners of property that is jointly jointly owned own and use it jointly, unless otherwise established by agreement between them.

The disposal of property that is jointly jointly owned is carried out with the consent of all co-owners, unless otherwise established by law.

Co-owners have the right to authorize one of them to perform transactions regarding the disposal of joint property.

A deed regarding the disposal of joint property, committed by one of the co-owners, may be declared invalid by the court at the request of another co-owner if the co-owner who committed the deed lacks the necessary powers.

Agreements on the disposition of property rights of intellectual property are a number of agreements in the field of intellectual property aimed at acquiring, changing or terminating property rights to objects of intellectual property law.

About contracts (general provisions)

The disposal of property rights of intellectual property is carried out on the basis of the following transactions:

  1. license to use the object of intellectual property rights (exclusive, single, non-exclusive, as well as another type that does not contradict the law ) ;
  2. license agreement;
  3. contract on creation to order and use of the object of intellectual property rights;
  4. agreement on the transfer of exclusive intellectual property rights;
  5. another transaction regarding the disposition of property rights of intellectual property.

Taking into account the above, there are actually three general types of transactions:

  • regarding the creation of an object of intellectual property ;
  • regarding granting the right to use an object of intellectual property;
  • regarding the transfer (alienation) of rights to an object of intellectual property.

The transaction regarding the disposal of property rights of intellectual property is concluded in written (electronic) form, except for cases specified by law. In case of non-compliance with the written (electronic) form of the contract, such contract is null and void.

The law may establish cases in which an agreement on the disposal of intellectual property rights can be concluded orally (for example, in the field of copyright, this is an agreement on the use of a work in periodicals - newspapers, magazines, electronic mass media, etc.).

The essential conditions of each of the contracts differ depending on the object of intellectual property law in relation to which the contract is intended to regulate legal relations between the parties.

About peculiarities in the field of copyright and related rights

The disposal of property rights to objects of copyright or objects of related rights (hereinafter - the Object) can be carried out on the basis of:

  • of the employment contract (contract) - in the part of the conditions regarding the distribution of property rights to the official composition or official performance, official phonogram, official videogram;
  • contract on the creation to order and use of the Object;
  • contract on the transfer (alienation) of property rights to the Object;
  • license agreement for the use of the Object;
  • public license to use the Object;
  • another deed regarding the disposition of property rights to the Object (for example, a publishing contract).

In the contract regarding disposal of property rights to the Object, the following are defined:

  1. information allowing identification of the relevant object (name and/or other characteristic features);
  2. the amount of property rights to the relevant object transferred (granted) under the contract;
  3. the amount or method of determining the fee (remuneration) or indicating the gratuitous nature of the contract.

Terms of contracts regarding the disposition of property rights to objects of copyright or objects of related rights, which limit the right of the creator of such an object to create (make, produce) other objects of copyright or objects of related rights, are worthless.

Terms of transactions regarding the disposal of property rights to objects of copyright or objects of related rights in relation to the transfer (alienation) or granting of permission to use (license) in relation to the property right to a fair reward, provided for in accordance with part 3 of Articles 12, 38, 39, 40 of the Law of Ukraine "On Copyright and Related Rights" (hereinafter - the Law on Copyright), are null and void.

The subject of an agreement on the transfer (alienation) of property rights to objects of copyright and objects of related rights cannot be objects and property rights that did not exist at the time of the conclusion of the agreement.

Regarding the contract on the creation to order and use of the Object:

  • the executor is always a natural person;
  • personal non-property rights will belong to the creator of the Object;
  • property rights to the Object created by order are transferred to the customer from the moment of its creation in full (unless otherwise stipulated by the contract);
  • if property rights to the work are transferred to the customer, the author is entitled to remuneration;
  • the customer has the right to make changes to the work created according to the order, to accompany it with illustrations, prefaces, afterwords, etc., unless otherwise stipulated in the order contract;
  • The original work of fine art, created to order, becomes the property of the customer. At the same time, intellectual property rights to such a work remain with its author, unless otherwise established by contract or law.

Regarding the transfer (alienation) of property rights:

  • the subject of the contract may be the rights provided for in accordance with Part 1 of Articles 12, 38, 39, 40 of the Copyright Law ;
  • according to the scope, the rights are transferred on the territory of all states of the world in full / in part (for certain methods of use on the territory of certain states of the world, or for all methods of use on the territory of certain states of the world; property rights to the extent not provided for in the contract are as follows, that are not transferred);
  • the condition of transfer (alienation) of property rights for a period of validity of the acquired property rights longer than that stipulated by law is null and void;
  • the transferor of rights is obliged to provide the successor with information about the existence of license, sublicense agreements and other rights and obligations regarding the rights being transferred;
  • conclusion of an agreement on the transfer (alienation) of property rights does not affect the validity of license and sublicense agreements that were concluded earlier, unless otherwise provided for in the relevant license agreement.

Regarding the license agreement:

  • the licensee receives permission to use the Object;
  • use of the Object is carried out in the manner (methods) determined by the contract;
  • the use of the Object is carried out during the term defined by the contract
  • use of the Object is carried out in the territory defined by the contract;
  • the licensee does not have the right to use the Object in a territory not provided for by the contract and in a way not specified by the contract;
  • the contract may establish the right of the licensee to issue further permits - sublicenses, as well as the right to conclude subsequent sublicenses (the conditions of the sublicense regarding the use of the Object (scope of rights, territory, term) cannot be wider than the license agreement);
  • in the absence of a definition of the type of license in the license agreement, it is considered that the license is non-exclusive;
  • if the territory of validity of the license agreement (license) is not defined - the validity of the license extends to the territory of Ukraine;
  • if the term of the license agreement (license) is not specified - the agreement is considered to be concluded for the period remaining until the expiration of the term of validity of the exclusive property right to the Object (but not more than 5 years; if 6 months before the end of the 5-year term there is no written notice of the termination of the contract - the contract will be extended for an indefinite period. In this case, each of the parties may at any time refuse the contract by notifying the other party in writing six months before the termination of the contract);
  • the licensee exercises its powers only under the condition of observing the personal non-property rights of the author and/or performer, the non-property rights of the producer of the phonogram and/or the producer of the videogram, and/or the broadcasting organization.

Regarding the Public License:

  • issued to an unspecified circle of persons under the conditions established by the contract (public license);
  • may be irrevocable (can be terminated only in relation to the person who violated the terms of the license);
  • is non-exclusive (exclusive and single public licenses are void);
  • the license is issued by publishing its terms together with the possibility of remote familiarization with the relevant object of copyright or the object of related rights to an unlimited number of persons using information and telecommunication systems;
  • can be free.

About peculiarities in the field of industrial property

Regarding trademarks:

  • the license agreement must contain, in particular: information about the methods of using the trademark, the territory and period for which its use is allowed, and the condition that the quality of the goods and services produced or provided under the license agreement will not be of inferior quality goods and services of the owner of the certificate and he will monitor the fulfillment of this condition;
  • the agreement on the transfer of ownership of the trademark and the license agreement are considered valid if they are concluded in writing and signed by the parties;
  • the party to the contract has the right to inform an unspecified circle of persons about the transfer of ownership of a trademark or the issuance of a license to use a trademark by publishing information in the Bulletin in the amount and order established by the National Intellectual Property Authority (hereinafter - NOIP), with simultaneous entry them to the Register;
  • in the case of publication of information on the transfer of ownership rights to a trademark in relation to part of the goods and services specified in the certificate, NOIP issues a new certificate in the name of the person to whom this right has been transferred, subject to the presence of a document on the payment of the state duty for the issuance of the certificate.

Regarding industrial samples:

  • the agreement on the transfer of ownership of the industrial design and the license agreement are considered valid if they are concluded in writing and signed by the parties;
  • the party to the contract has the right to inform an unspecified circle of persons about the transfer of ownership of the trademark or the issuance of a license to use the trademark by publishing information in the Bulletin in the amount and order established by the IPPC, with simultaneous entry into the Register;
  • the owner of a registered industrial design has the right to submit an application to NOIP for official publication to grant permission to any person to use the registered industrial design. A person who expressed a desire to use the specified permission is obliged to conclude a payment agreement with the owner of the registered industrial design.

Regarding inventions, utility models:

  • on the basis of a contract, the owner of the patent can transfer the exclusive intellectual property rights to the invention (utility model) to any person who becomes his legal successor, and with regard to the secret invention (utility model) - only with the agreement of the State Expert on issues of secrets;
  • the patent holder has the right to give permission (issue a license) to any person for the use of the invention (utility model) on the basis of a license agreement, and with regard to a secret invention (utility model), such permission is granted only with the approval of the State Expert on Secrets;
  • the agreement on the transfer of ownership of the invention (utility model) and the license agreement are considered valid if they are concluded in writing and signed by the parties;
  • the party to the contract has the right to inform an unspecified circle of persons about the transfer of ownership of the trademark or the issuance of a license to use the trademark by publishing information in the Bulletin in the amount and order established by the IPPC, with simultaneous entry into the Register;
  • the owner of a patent, in addition to a patent for a secret invention (secret utility model), has the right to submit to the NOIP for official publication a statement of readiness to grant permission to any person to use the patented invention (utility model). A person who expressed a desire to use the specified permission is obliged to enter into an agreement with the owner of the patent or declaratory patent.

Regarding plant varieties:

  • the subject of the right to distribute a variety has the right to transfer such right on the basis of a deed to any person in whole or in part. The competent body for state registration of the variety may determine the procedure for transferring the right to distribute the variety;
  • permission (license) to use the variety is granted on the basis of a license agreement (the licensor transfers the right to use the variety to the licensee, who undertakes to pay the licensor the payments specified in the agreement and to perform other actions stipulated by the license agreement);
  • the patent holder has the right to submit to the Competent Body for State Registration of the Variety for official publication a statement of readiness to grant permission to any person to use the variety (open license) ;
  • a license agreement, an agreement on the transfer (alienation) of intellectual property rights to a plant variety is considered valid if it is concluded in writing and signed by the parties;
  • a compulsory variety license entitles the person receiving it to use the variety without the permission of the patent owner. The Cabinet of Ministers of Ukraine and the court can issue compulsory licenses (can only be non-exclusive, with a definition of the scope of use of the variety, the validity period of the permit, the size and procedure of payment of remuneration to the patent holder) for the use of varieties;
  • The Cabinet of Ministers of Ukraine may issue a compulsory license for a period of up to 4 years to a person determined by it on the grounds of extreme public necessity and under the conditions of war or a state of emergency with the payment of appropriate compensation to the patent holder. At the same time, the Cabinet of Ministers of Ukraine may require the patent owner to provide, on acceptable financial terms, at the disposal of the licensee, material for the propagation of the variety in volumes sufficient for the proper exercise of the rights granted by the compulsory license;
  • if after 3 years from the date of state registration or from the date when the use of the variety was terminated, the variety is not used in Ukraine or is used in small quantities and any person applies to the patent holder with a proposal to enter into a license agreement, and the patent holder without refuses for valid reasons, this person can apply to the court with a claim for the issuance of a compulsory license for the use of the variety.

Regarding the layout of semiconductor products:

  • the agreement on the transfer of ownership of the composition and the license agreement are considered valid if they are concluded in writing and signed by the parties;
  • the party to the contract has the right to officially publicly inform other persons about the transfer of ownership of the composition or the issuance of a license to use the composition. Such information is provided by publishing information in the Bulletin in the scope and order established by the IP, with simultaneous entry into the Register;
  • if the registered composition is not used in Ukraine within 3 years from the date of publication of official information about the registration or from the date when the use of the composition was terminated, then any person who has a desire and shows readiness to use the composition, in case of refusal of the owner of rights for a registered layout from the conclusion of a license agreement, may apply to the court for permission to use the registered layout;
  • in order to ensure the health of the population, environmental safety and other public interests, the Cabinet of Ministers of Ukraine may allow the use of a registered layout to a person designated by it without the consent of the owner of rights to the layout in the event of his unjustified refusal to issue a license for its use.

About the registration of contracts

License for the use of the object of intellectual property rights, license agreement, Agreement on the creation to order and use of the object of intellectual property rights, Agreement on the transfer of intellectual property rights, are not subject to mandatory state registration.

Their state registration is carried out at the request of the licensor or licensee in the manner established by law.

The absence of state registration does not affect the validity of the rights granted under a license or other contract, and other rights to the corresponding object of intellectual property rights, in particular, the licensee's right to apply to court for the protection of his right.

However, the fact of transfer of exclusive property rights of intellectual property, which in accordance with this Code or another law are valid after their state registration (for example: inventions, plant varieties, utility models, industrial samples, trademarks, layout of semiconductor products), is subject to state registration.

Free consultations on the protection of intellectual property rights

We provide consultations on procedures for the protection of intellectual property rights in Ukraine and abroad, as well as written materials.

The following are provided free of charge:

  • The first 15 minutes of an oral consultation regarding procedures for the protection of intellectual property rights;
  • Standard written materials regarding procedures for the protection of intellectual property rights.

In most cases, free consultations and basic written materials are enough to make a decision to start working with us.

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