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  • Intellectual property framework

    Overview

    Intellectual property is a right protected by the Constitution of the Republic of Angola. The fundamental intellectual property framework in Angola is provided in 2 main acts: the Legal Regime for the Protection of Copyright and Related Rights and the Industrial Property Law.

  • Commercial contract framework

    Overview

    Angolan law lays down a general principle of contractual freedom, which means that parties are mostly free to establish the terms and conditions to be observed by the contracts they enter into (exceptions are made to mandatory rules legally imposed which will depend on the specific contractual relationship) and are entitled to enter into contracts provided for in the law, but also into contracts that are not provided for in the law.

    Angolan law does not establish a unitary act or set of rules applicable to all commercial contracts. Depending on the specific contractual relationship, commercial contracts may be subject to the provisions of the Civil Code, Commercial Code, Copyright and Related Rights Law, and the Industrial Property Law as well as other specific legislation.

    The aforementioned set of rules changes according to the specific contract in question.

  • Copyrights

    Nature of right

    Copyright covers original literary, scientific and artistic intellectual creations, or works. Registration is not required for the acquisition or maintenance of copyright rights; however, there are certain specific copyright-related acts subject to registration in order to be valid.

    In Angola, copyright comprises economic and moral rights.

    In the scope of economic rights, copyright owners have the exclusive right to use, enjoy and dispose of their work, or to authorize the use of the work, wholly or in part, by third parties.

    Moral rights consist in the right to claim authorship of the work, as well as the right to ensure its genuineness and integrity.

    Legal framework

    Copyrights are governed by Law No. 15/14 of July 31, which introduced the Legal Regime for the Protection of Copyright and Related Rights.

    Duration of right

    As general rule, moral copyrights are unlimited in time and, therefore, are inalienable and imprescriptible. With respect to economic copyrights, copyright protection lasts for a term of 70 years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of works in collaboration, copyright expires 70 years after the death of the last surviving author. As per collective works or works originally assigned to a corporate person, copyright expires 70 years from the date of the first licit publication or disclosure, except if the individuals who create it were identified in the version of the work available to the public.

    For an anonymous work, or work that was legally published or disclosed without identifying the respective author, protection is for 70 years after publication or disclosure.

    Please note that, with respect to applied arts and photographic works, economic copyrights protection lasts for a term of 45 years, counted as of January 1 of the first year after the death of the author.

    Economic copyrights related to a broadcaster last up to 35th calendar year after the broadcast.

    Ownership / licenses

    Moral rights are inalienable.

    The copyright owner, as well as their successors or assignees, may authorize the use of the work by third parties or assign economic rights, wholly or partially.

    Granting an authorization to third parties in order for them to divulge, publish, use or explore the work does not imply the transfer of copyright rights.

    Authorization shall only be granted in writing, mandatorily including the parties involved, the title and type of the work, the rights concerned, the duration, place and price conditions.

    Please note that the assigns are only effective against third parties when registered.

    Remedies for infringement

    The copyright owner may request payment of compensation by the agent for damages and losses to repair the damage suffered as a result the infringement, as well as payment of expenses caused by that infringement, which may include legal expenses.

    The amount of the compensation is determined in accordance with the civil liability regime provided for by the Angolan Civil Code, taking into account the amount of material and moral damage suffered by the copyright owner, as well as the profit obtained by the offender.

    When it is proven that the infringing copies affect a right, the Court may order, ensuring that the penalty is proportionate to the seriousness of the offense and taking into account the legitimate interests of third parties, the destruction of those copies and their packaging or their elimination of trade channels by any other reasonable means, without compensation of any kind, in order to avoid any damage to the copyright owner.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Angolan law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Angolan has enacted no specific rules on protection of mask works or topographies. Although Angola is part of the WTO and has approved the TRIPS Agreement, it has not yet implemented any rules on mask works or topographies protection.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, particularly patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patent rights cover new inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    An invention shall be considered new if it does not form part of the state of the art, which comprises everything, inside or outside the country, made available to the public by means of a written or oral description, by use, or in any other way, before the date of filling of the patent application.

    An invention shall be considered involving an inventive step if it is not obvious to a person skilled in the art.

    An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry, including agriculture, fishing and handicraft.

    A national patent confers on its owner the exclusive right to exploit the patented invention in Angolan territory.

    Legal framework

    Patents are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 2 to 14)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19
    • Cooperation Treaty patent (PCT) approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Duration of right

    Patent protection is granted up to a maximum period of 15 years from the date of filling of the patent application.

    Ownership / licenses

    Patents can be transferred in writing, by means of public deed, whether or not for financial reward.

    Patents may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses shall be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

  • Trademarks

    Nature of right

    A trademark is a sign that distinguishes a company's goods or services, from the goods and services provided by other companies. There are 3 types of trademarks, namely:

    • Nominative: when constituted by letter(s) or word(s)
    • Figurative: consisting of figures or images and
    • Mixed: when it includes a combination of figures and words or letters in its constitution.

    The registered trademark confers to the owner, the right to prevent third parties that do not have their consent from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered.

    Legal framework

    Trademarks are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 29 to 40)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Angola is not a party to either the Madrid Agreement or the Madrid Protocol. As such, International Registrations (IRs) cannot be extended to Angola. Angola's accession to the Madrid Agreement and/or the Madrid Protocol is currently the subject of consultation, but the position is unlikely to change for a number of years to come.

    Duration of right

    National trademark registrations remain valid for 10 years starting from the date of filing of the application and may be indefinitely renewed for equal periods.

    Ownership / licenses

    Trademarks can be transferred in writing, wholly or partially, whether or not for financial reward. A transfer of the whole of the undertaking shall include the transfer of the trademark except where there is agreement to the contrary or circumstances clearly dictate otherwise.

    Trademarks may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including trademarks, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

  • Trade secrets

    Nature of right

    Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

    Legal framework

    Trade secrets are addressed in article 73 of the Angolan Industrial Property Law.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

    Not applicable for this jurisdiction.

    Remedies for infringement

    Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).

    Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).

  • Other key IP rights

    Nature of right

    Design

    Industrial design means any new arrangement or set of lines or colors that, for industrial or commercial purposes, can be applied to the ornamentation of a product by any manual, mechanical, chemical, simple or combined process.

    The registered design confers to the owner the right to prevent third parties that do not have their consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

    Industrial designs

    Industrial designs

    Legal framework

    Design

    Designs are governed by Chapter III of the Industrial Property Law (Articles 15 to 28).

    Duration of right

    Design

    Designs registrations remain valid for 5 years starting from the date of filing of the application and may be renewed for 2 consecutive times of 5 years each.

    Ownership / licenses

    Design

    Designs may be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Design

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including designs, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a registered design may be punishable with a fine.

  • Intellectual property in employment context

    Employees

    As a general rule, the copyright over a work made under a labor agreement or in compliance with functional obligations is determined by agreement between the parties. In case no agreement exists, it is presumed that the ownership over the work belongs to the respective intellectual creator. In cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

    The right to patent shall belong to the inventor or their successors in title. Notwithstanding, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the employer.

    Consultants / contractors

    In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

  • Key commercial contract considerations

    Registration of commercial agreements

    There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

    Recognized language of commercial agreements

    There are no general requirements under Angolan law that provide that contracts must be written in Portuguese. However, in certain cases – for instance, contracts with consumers – the Portuguese language is mandatory, and, if the contract is to be used in specific situations – for example, for purposes of evidence in court or used with public authorities – translation to Portuguese is required.

    Country-specific issues for online content

    Electronic contracts are regulated under Presidential Decree No. 202/11 of July 22.

    Enforceability of online/clickwrap/shrinkwrap terms

    Contracts may be concluded electronically, provided that it does not affect its validity or effectiveness due to the use of this medium. Please note that general contractual clauses requiring electronic conclusion of consumer contracts are prohibited.

    The provider shall make available to the recipients, before the conclusion, unambiguous minimum information including (i) the contract conclusion process, (ii) whether or not the contract is stored by the service provider and accessibility by the recipient, (iii) the language or languages in which the contract may be concluded, (iv) the technical means which the provider makes available so that errors of introduction which may be contained in the order form may be identified and corrected, (v) the contractual terms and general clauses of the contract to be concluded, (vi) the codes of conduct subscribed and information on how to consult them electronically  and (vii) the effective technical means which allows the recipient to identify and correct inserted errors.

    Governing law

    The interpretation and enforceability of contracts is a matter of governing law. The choice of law by the parties is accepted as a general principle, except when otherwise provided for by law; please, however, note that, in certain cases, there are rules of mandatory application – for instance, in the scope of contracts concluded with consumers.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    This will depend on the specific warranty. Notwithstanding, the law may provide some restrictions on the enforceability of warranty disclaimers (eg, for reasons of consumer protection).

    Enforceability of exclusions/limitations of liability indemnification

    As general rule, the enforceability of exclusions or limitation of liability is limited under Angolan law. According to civil law, limitation of liability or exclusion of liability concerns the grounds of liability itself and the damages and losses. The law is not absolutely clear when dealing with the matter; therefore, some hold the opinion that the law does not prevent clauses limiting or excluding liability for acts of mere negligence, while others suggest that all clauses of exclusion or limitation are completely null and void.

    Indemnification

    Indemnification clauses in contracts are, in principle, enforceable, but may be subject to restrictions provided for in the law. It is relatively common to stipulate in commercial agreements that the indemnifying party will indemnify and hold harmless the other party against claims of third parties related to the subject matter of the agreement.

    Electronic signatures

    According to Angolan law, a qualified electronic signature is equivalent to an autographic signature in paper documents. An electronic document shall only be deemed to be signed for purposes of evidence where it meets the requirements set by the law on electronic signature and certification.

  • Key contacts
    Murillo Costa Sanches
    Murillo Costa Sanches
    Of Counsel DLA Piper [email protected] T +351 213 583 659 View bio
    Joni Garcia
    Joni Garcia
    Associate DLA Piper ADCA Angola [email protected] T +244 926 612 525

Intellectual property in employment context

Consultants / contractors

Angola

In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

Argentina

The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

Australia

An independent contractor (including a consultant) owns the copyright in any work, unless there is an agreement in writing executed by the parties to the contrary.

Equally, an independent contractor has the right to patent an invention that he invented unless the contract between the contractor and the principal states otherwise.

It is often presumed that an independent contractor and a principal have a confidential relationship and thus the independent contractor has an obligation of confidentiality. However, specific confidentiality obligations are usually (and should be) included in the agreement between the parties.

Austria

Subject to the mentioned exceptions, in the absence of an agreement, consultants and contractors will retain ownership of the intellectual property developed by them, even if contracted and paid for by another party. The agreement can, however, be oral and implied; nevertheless, written agreements are recommended for evidentiary purposes.

Belgium

In principle, subject to some exceptions (such as topography protection) and in the absence of contrary (contractual or statutory) provisions, consultants and contractors will retain ownership of the intellectual property developed by them, even if it is commissioned and paid for by another party.

In particular, reference can be made to the following rights:

Copyright

Where works are created by an author on commission, the economic rights may be assigned to the commissioning party on the condition that such assignment is expressly agreed between the parties and that the activities of the commissioning party are in a non-cultural field or in advertising and that the work is intended for such activity.

Patent

The patent applicant shall generally be deemed to be entitled to exercise the rights to the patent. Where an application for the granting of a patent has been made either for an invention unlawfully taken from an inventor or the inventor's successors in title or in violation of a legal or contractual obligation, the injured party may, in his or her capacity as owner, claim the transfer of the application or of the granted patent, notwithstanding all other rights or proceedings.

Design

If a design has been created on commission, the commissioning party shall, unless specified otherwise, be regarded as the creator, provided that the commission was given with a view to commercial or industrial use of the product in which the design is incorporated.

Brazil

Copyrights

Except for software as mentioned below, the Copyright Law is silent regarding the ownership of works created by consultants/contractors, which will be decided by the courts on a case by case basis. The concept of "work for hire" is not recognized by the Brazilian Law.

Software

Unless otherwise agreed, the engaging party owns the rights to software developed during the services agreement whose purpose is research and development or which result from the nature of the service description. Unless otherwise agreed, compensation for the service shall be limited to the agreed remuneration.

Mask works

Unless otherwise agreed, the engaging party owns the rights to mask works developed during the services agreement in which the creative activity results from the nature of the service description or in which the service provider uses resources, technological information, industrial or commercial secrets, materials, facilities or equipment of the engaging party. Unless otherwise agreed, compensation for the service shall be limited to the agreed remuneration.

Patents

Inventions and utility models belong to the engaging party when they result from a services agreement performed in Brazil whose purpose is research or inventive activity or if the inventive activity results from the nature of the services. Unless otherwise agreed, compensation for the service shall be limited to the agreed remuneration.

Trademarks

There is no legal provision concerning the ownership of trademarks in a service agreement context. The rule is "first to file," if the filing does not infringe any legal provision.

Trade secrets

Not applicable for this jurisdiction.

Canada

It is customary for consultants and contractors to sign invention assignment and confidentiality agreements. In the absence of any written agreements to the contrary, the consultant or contractor retains ownership of any intellectual property rights. A patent assignment is not required to be in writing, whereas a copyright assignment is required by statute to be written.

Chile

The same rule as for employment relationships also applies to consultant/contractors.

It is customary for consultants and contractors to sign written agreements. In the absence of a written assignment of developments and work products, consultants and contractors may retain ownership of the intellectual property developed by them.

China

Intellectual property ownership can be decided by the written contracts between the hiring party and the consultants and contractors. In the absence of a written clause regarding the assignment of developments, consultants and contractors will retain ownership of the intellectual property developed by them, even if contracted and paid for by another party.

Colombia

The same rules used for employees are applied to contacts with consultants and contractors.

Public officers

Law 23 of 1982 and Law 44 of 1993 determine that economic rights derived from works created by public officers when complying with their legal and constitutional functions are presumed to transfer to the state. Public officers will hold the moral rights provided that it is not contrary to the rights and obligations of the corresponding legal entity. In any case, public interest will prevail.

Intellectual Property in projects financed by the state

The Law 1753 of 2015 established that, in research projects or in projects for development of science, technology and innovation or communications and information technologies financed with public resources, the state may assign free of charge the intellectual property rights that it holds, provided that it does not affect national security or defense. In addition, the state may authorize the transfer of such rights to the developer of the project. The terms and conditions of the assignment and transfer will be set forth in the corresponding agreement.

Czech Republic

Customary for consultants and contractors to sign written agreements providing license to the other party.

Denmark

Consultants and contractors own the intellectual property developed by them, unless they have signed a written agreement saying otherwise.

Finland

In order for intellectual property ownership to transfer from a consultant to the customer, parties must have specifically agreed to do so. If such transfer of rights has not been agreed, the ownership to the intellectual property will in most cases remain property of the consultant.

It is common and recommended to include provisions regarding IP rights and confidentiality in consultant contracts.

France

There is no "work for hire" applicable to consultants and contractors under French law and, generally, intellectual property rights must be specifically assigned or licensed to the engaging entity or remain vested in the consultant/contractor.

Germany

Consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties.

Hong Kong, SAR

It is customary for consultants and contractors to sign written agreements. The ownership of the work is determined by the express terms of the agreement. Absent an express term of written assignment of developments, consultants and contractors will generally retain ownership of the intellectual property developed by them, even if it is contracted and paid for by another party.

Hungary

Customary for consultants and contractors to sign written agreements. Absent a written assignment of developments, consultants and contractors will retain ownership of the intellectual property developed by them, even if contracted and paid for by another party. Please note that under Hungarian copyright laws – as a main rule (with software and films being the main exceptions) – only a license can be acquired from the author, and the copyright itself cannot be transferred in its entirety.

India

In case of a commissioned work product created by a consultant/contractor, Section 17 of the Copyright Act may be applicable, making it a work for hire. However, in all other cases, it is common to execute a general assignment, along with enabling provisions for a specific assignment of intellectual property.

Indonesia

Copyright Law provides that if a creation is created in an employment relationship or based on an order, then the party that creates such creation will be deemed as the creator and copyright holder unless agreed otherwise between the parties.

Furthermore, Copyright Law stipulates that if the creation is designed by someone and is manifested and is conducted by other person under the lead of the person who designed such creation, the designer will be deemed as the creator.

Patent Law provides that the party entitled to a patent is the inventor or a party who has received further rights from the relevant inventor.

Therefore, in a consultancy or contractor relationship, if the creator of a copyrighted work or patented invention is the consultant or the contractor, then the consultant or contractor is entitled to the copyright or patent unless agreed otherwise.

It then becomes a commercial negotiation point between the parties as to whether or not the copyright/patent/other intellectual property rights created by the consultant or contractor arising out of the relationship will vest with the consultant or contractor or whether it will vest with the client (ie, the party instructing the work).

If the copyright or patent or other intellectual property right is intended to pass to the party instructing the work, then consultancy or contractor agreement must include an assignment clause or a separate declaration to be signed by the consultant or contractor as an attachment to the agreement where the contractor or consultant agrees to assign all intellectual property that was created as a result of the consultancy or contractor agreement to the party instructing the work.

Ireland

The position regarding works done by persons who are independent contractors or consultants is different to the employer/employee relationship. Where the works are created as a result of and/or in the course of provision of the services by the independent contractor or consultant, typically the resulting intellectual property rights will be owned by the independent contractor or consultant.

Therefore it is necessary to ensure that appropriate provisions are included in the contract between the person commissioning the works or services and the independent contractor or consultant, to set out the intended position regarding ownership, transfer and licensing rights in relation to the resulting works. Such provisions should include appropriate terms providing for the waiver of moral rights where applicable.

Israel

The author is the first owner of the copyright in a commissioned work, unless the parties agree otherwise, either expressly or implicitly (note that this is not the case where the commissioned work is a design).

The state is the first owner of a work made by or commissioned for the state, or by an employee of the state in the course of and during the period of his or her service.

Therefore, in agreements with consultants/contractors, one should include a covenant in which the consultant/contractor assigns all intellectual property rights that he or she may have to the company, as otherwise, such rights may vest with the consultant/contractor.

Italy

Law No. 81/2017, published on June 13, 2017, established the principle, previously supported only by case law, according to which any economic IP right originating from the performance of the contract belongs to the party retaining the contractor, as long as the inventive activity is expressly indicated as the object of the contract and specifically remunerated. Otherwise, they belong to the contractor. The parties remain free to agree otherwise.

Japan

In practice, consultants and contractors are often required to sign written agreements to assign all intellectual property related to his work for the company. Some courts have applied the concepts mentioned in "Employees" section above to consultants and contractors given the fact that relationship was an employment relationship due to misclassification (ie, disguised service/independent contractor agreement). It is recommended that written contracts expressly assign all intellectual property to the company retaining the consultant/contractor.

Luxembourg

Please see the "Employees" section.

Mexico

There is no specific legal framework under Mexican law for ownership of intellectual property developed by consultants and contractors. It is customary for consultants and contractors to sign written agreements. Absent a written present assignment of developments, consultants and contractors will retain ownership of the intellectual property developed by them, even if contracted and paid for by another party.

Netherlands

Copyright

If a work has been made exactly according to the draft and under the strict guidance and supervision of another person, that person shall be deemed the author of the work.

Where a design is created in a consultants/contractors context, the copyright relating to the design shall belong to the party deemed to be the designer, in accordance with the provisions of the Benelux Convention on Intellectual Property.

Patent

The applicant shall generally be deemed to be entitled to exercise the right to the patent. Where an invention has been made by 2 or more persons working together by agreement, they shall have a joint right to a patent. Any person who has made an invention for which a patent application has been filed shall have a right to be mentioned as the inventor in the patent.

Design

If a design has been created on commission, the commissioning party shall, unless specified otherwise, be deemed to be the designer, provided that the commission was given with a view to commercial or industrial use of the product in which the design is incorporated.

Where a design is created in a consultants/contractors context, the copyright relating to the design shall belong to the party deemed to be the designer, in accordance with the provisions of the Benelux Convention on Intellectual Property.

Trade secrets

Article 7:678 sub I of the Dutch Civil Code provides that an employee who discloses information about his or her employer's company, which information he should have kept secret, can be dismissed with immediate effect. Post-employment, the disclosure by a former employee of trade secrets of the former employer can be interpreted to be a breach of the obligation following from Article 7:611 of the Dutch Civil Code to act as a good employee.

New Zealand

As a general rule if intellectual property is created by an independent contractor, it belongs to the contractor. However, this can be modified by express agreement and, in some cases, by implied terms. If copyright works or designs are commissioned works, generally the person commissioning the work will own the intellectual property rights in it.

Norway

Consultants and contractors own the intellectual property developed by them, unless they have signed a written agreement stating otherwise.

Philippines

For copyright, in the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission, the person who so commissioned the work shall have ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary.

For patent, the person who commissions the work shall own the patent, unless otherwise provided in the contract.

Poland

Industrial property rights

Under the Industrial Property Law Act, where an invention, utility model or industrial design is created in the performance of an employment contract or other contract, it is the employer or the contractor that is entitled to the right to obtain a patent for an invention or a protection right over a utility model or a right in industrial design registration, unless the parties agreed otherwise.

Copyrights

Under Polish law, copyrights to works created by consultants or contractors are not automatically transferred to the entity to which the consultants or contractors are related. In order to transfer the copyrights to this entity to the greatest possible extent, the contract should stipulate:

  • The transfer of economic copyrights for specified fields of exploitation
  • The transfer of the right to use and dispose of works derived from the work created by the consultant or contractor in specified fields of exploitation
  • The authorization for the entity to exercise personal copyrights on behalf of the consultant or contractor

Portugal

In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

Romania

It is customary for consultants and contractors to sign written agreements. As a general rule, the written form of the agreement is mandatory in order to prove the content of such agreement.

Russia

The rules for employees do not automatically extend to non-employees, such as consultants and contractors. Unless the parties specify the allocation of intellectual property rights in a written contract, in most types of contracts, the respective intellectual property rights would generally vest on the creator and would not automatically be transferred to the party who ordered the respective work.

Saudi Arabia

Please see our comments in relation to employees, which are also relevant here.

Singapore

If a piece of work is commissioned, the creator will generally be the owner of the copyright (subject to the information in the copyright section – ownership/licenses), unless otherwise agreed in writing.

It is commonplace for contractors and consultants to be subject to confidentiality clauses in Singapore.

Slovak Republic

Under the Copyright Act, contractual works are works created by authors based on contracts for work. If authors create contractual works, they grant their consent to use the works for the purpose arising from the contracts, unless otherwise agreed. Use for another purpose requires the consent of authors, unless otherwise stated in the Copyright Act. Authors are entitled to use the work by themselves as well as to license it, unless otherwise agreed and unless it is in conflict with customers' legitimate interests. These provisions are not applicable for audiovisual works.

Under the Act on Topography, if topographies are created within the fulfilment of duties under a contract, the rights belong to entitled contractual parties, unless otherwise agreed.

South Korea

It is customary for consultants and contractors to sign written agreements. Absent a written assignment of developments, in principle, consultants and contractors will retain ownership of the intellectual property developed by them. However, depending on various factors such as price paid to consultants or contractors and degree of contribution in planning and developments, ownership in developments can be deemed assigned.

Spain

It is customary for consultants and contractors to sign written agreements. Absent a written assignment of developments, consultants and contractors will retain ownership of the intellectual property developed by them, even if contracted and paid for by another party.

Sweden

It is customary for consultants and contractors to sign written agreements. Absent such a written agreement, the consultant/contractor retains the ownership of the intellectual property developed by them, even if contracted and paid for by another party, as a general principle.

Switzerland

It is customary for consultants and contractors to sign written agreements. Absent a written assignment of developments, consultants and contractors will retain ownership of the intellectual property developed by them.

Taiwan, China

It is customary for the party who engages a consultant or contractor to sign an agreement with such consultant or contractor setting forth which party will retain ownership of the work completed by the consultant/contractor. In the absence of an agreement:

  • The consultant/contractor shall be deemed the author of the work and the economic rights to such work shall be vested in the consultant/contractor
  • The right to apply for a patent and the resulting patent shall be vested in the consultant/contractor; provided, however, that the party who retains the consultant/contractor shall be entitled to exploit such invention, utility model or design
  • The right to apply for registration of the circuit layout shall be vested in the party who retains the consultant/contractor

Ukraine

The work-for-hire doctrine applies to relations with individuals acting as consultants or contractors. Similarly, as in employment relations, transfer of IP rights from consultants or contractors to work-for-hire objects must be formalized in writing. Otherwise, if no IP transfer provisions are included in the contract, by virtue of Ukrainian law, the IP rights to created objects would be deemed owned by the parties jointly.

Under Ukrainian law, the work-for-hire doctrine does not work in relations between legal entities. Therefore, no automatic transfer of IP rights between legal entities is possible under Ukrainian laws, and a specific mechanism of transfer of IP rights to deliverables following their creation must be provided in the agreement between such legal entities. Normally, transfer of IP rights to deliverables created under a respective agreement between legal entities shall be effected on the basis of an act of acceptance of services resulting in the creation of respective IP rights objects. In such a case, the IP rights will be transferred under such agreement from the moment of signature of respective act of acceptance. The act of acceptance shall provide for a sufficient description of deliverables to which the IP rights are assigned. The other mechanism of transfer of IP rights allowing sufficient identification of the deliverables to which the IP rights are assigned may be established by an agreement.

United Arab Emirates

Please see point above in relation to employees. The same framework applies to all types of employment contracts including those with consultants and contractors.

United Kingdom

For copyright in commissioned works, the contractor will own the copyright subject to a written agreement to the contrary. The preferred approach is for a commissioner to take an assignment of all existing and future copyright in the works and any associated materials or documents and obtain a waiver from the contractor of his moral rights in the same.

Without express written provisions to the contrary, legal title in an invention will vest in the contractor unless a court implies a term into the contract granting ownership to the commissioner.

United States

It is customary for consultants and contractors to sign written agreements. Absent a written present assignment of developments, consultants and contractors will retain ownership of the intellectual property developed by them, even if contracted and paid for by another party.

Contractor agreements with individuals (not contractors or consultants that are entities) must include the same notice described above under the DTSA for employee agreements in order for an employer of an individual contractor or consultant to preserve its right to recover exemplary damages or attorneys’ fees in a claim for misappropriation of trade secrets under the DTSA.