Contracts and maintenance of transactions with intellectual property
Accompanying transactions with intellectual property is a service of the law firm AGTL Kharkiv, Kyiv, Odessa. The service will be of interest to both rights holders who have decided to consent to the use of their intellectual property to others (the license agreement) or to transfer all rights to it (the agreement on the exclusion of rights) and those interested in acquiring exclusive rights.
Law firm AGTL Kharkiv provides services related to the maintenance of transactions on the transfer of intellectual property rights.
The service includes the development of a contract on the transfer of rights to the intellectual property object, the maintenance of negotiations with the contractor, the state registration of the contract (including the preparation of all the necessary documents, sending them to Ukrpatent, accompanying the registration procedure, including the preparation of responses to possible requests of the Ukrpatent, obtaining a registered contract and annex to the certificate of intellectual property).
Benefits of maintaining IP deals
- An individual approach to the maintenance of transactions with intellectual property;
- Acquiring strong legal protection for your business
- services make it possible to get the most out of intellectual property transactions.
Types of IP management contracts and transactions
- The alienation of exclusive rights to an intellectual property;
- Issuing a license exceptional and simple non-exclusive;
- Franchising (commercial concession);
- Pledge of intellectual property to secure liabilities under another transaction;
- The alienation of copyright to the work;
- Author’s order.
A license agreement is a contract under which the rights holder grants another person the right to use a trademark (service mark), invention, utility model or industrial design. Such use is carried out over a period of time, in the designated territory and within the limits described in the treaty. The right holder is rewarded for the right to use.
A commercial concession contract is a contract under which one party (the right holder) undertakes to grant the other party (user) the right to use in the user’s business activities a complex of exclusive rights belonging to the rights holder, including the right to trademark, service mark, and rights to other objects of exclusive rights, in particular commercial designation, secret of production (know-how). The peculiarity of this type of contract is that the rights to use a whole range of intellectual property objects are transferred. At the same time, the obligatory object transferred under the contract of commercial concession should be a trademark, a badge of service.
Features of these treaties
Only the right to use an intellectual property is transferred under the license agreement and the commercial concession agreement, with exclusive rights remaining for the rights holder. Whereas under the treaty on the alienation of exclusive law there is a complete transfer of rights, i.e. the owner of the object of intellectual rights changes.
The peculiarity of the contract on the exclusion of the exclusive right to trademark is that it is possible to transfer rights in respect of certain goods, works, services for which the trademark is registered. However, the alienation of the exclusive right to trademark under the contract is not allowed if it may cause the consumer to mislead the product or its manufacturer. In practice, the transfer of trademark rights only in the part of homogeneous goods (goods of one group, type, interchangeable goods (e.g. dairy product – kefir) and the abandonment of rights from the rights holder in the part of other homogeneous goods (e.g. dairy product – yogurt) is recognized as capable of misleading consumers. Since in such situations the consumer will perceive goods produced by one enterprise, when in reality they will be produced by different manufacturers and may have a completely different quality.
Corporate IP Support Deals
In addition to commercial transactions arising in the process of ordinary business activities by the rights holder, there are also corporate transactions on the orders of intellectual property, which arise, for example, in the reorganization of a legal entity, mergers and acquisitions of companies. In such circumstances, exclusive intellectual property rights are also transferred under universal succession to other legal entities.
Stages of transactions with intellectual property
The accompaniment includes the following steps:
Preparation of a contract for the alienation of the intellectual property object and the license agreement.
Check the contract provided by your counterpart to the legal purity and analysis of possible risks.
In cases provided by law – state registration of the contract.
AGTL lawyers will help the rights holders to draw up a contract from scratch that will meet their objectives, take into account the specifics of the intellectual property object and contribute to the maximum benefit from the realization of rights.
Customers wishing to acquire intellectual property rights, our specialists can provide services to verify contracts for the interests of the buyer and offer options for amendments to minimize risks on them in the future.
Terms of service to support transactions with intellectual property
- Maintaining transactions with copyright and related rights;
- Resolution of intellectual property disputes
- Registration of trademarks in the customs register;
- Copyright and related rights protection;
- Manufacturing Secrets (know-how);
- International patenting;
- Domain names (registration and dispute resolution);
- Comprehensive advice on intellectual property protection in information technology;
- International trademark registration;
- Legal Audit of Intellectual Property (IP Due Diligence);
- Trademark registration.
If you suspect that your rights are being violated, you can contact our specialists – lawyers and lawyers. We will conduct a preliminary analysis of the violation and offer you the best options for protecting your rights.