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.
Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition, the Civil and Commercial Code rules on joint property apply to patents.
The Patent Law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.
A patent owner may grant a license to another party. The patent owner should register the license for it to be defensible against third parties. However, failure to register the license does not affect the validity of the license. Compulsory licenses may be granted in limited circumstances, including if the owner fails to exploit their patent.
A patent owner may assign their patent interest – or part of the interest – to another person. They must register the assignment for it to be defensible against third parties. However, failure to register does not affect the validity of the assignment.
Patents may be co-owned. Co-owners may exercise their exclusive rights without accounting to the other. Co-owners cannot grant a license or assign their interest without the consent of the other co-owners.
The inventor or their successor in title has a right to the granted patent.
Patent owners may grant licenses. The license may, but does not need to, be recorded in the patent register for the perfection of the license. However, the license is effective towards third parties only upon registration.
Compulsory licensing is available in certain exceptional cases (such as the owner failing to use the patent).
The Patents Act provides that the patent rights are owned by the inventor or the inventor's successor in title.
Each co-owner has a personal right to exploit the invention. Rights granted to third parties or action taken against patent infringement requires approval of all co-owners or, in case of disagreement, as determined by a court. In the event that one of the co-patentees wishes to assign their share, the other co-patentees have a pre-emption right over it for a 3-month period from the moment they have been informed of the intention to assign. In addition, the "default" co-ownership regime as provided in the Belgian Civil Code (especially with regard to succession rights) is not applicable to patent co-ownership.
If a patent application is submitted only by one owner without the involvement of the other joint owner(s), the other joint owners may initiate legal proceedings requiring the transfer of the patent or the patent application as joint owner.
If the public interest so requires, the competent ministry can grant a compulsory license under certain specific conditions.
The party that applies for registration of the patent is presumed to be its creator. Joint ownership is recognized. Rights to patents may be assigned in whole or in part.
The owner of the patent registration or application may license its exploitation. Mandatory licenses may be granted to ensure free competition or prevent abuses of right or of economic power by the owner of the right, if the object of the patent is not being exploited or if market needs are not being met.
In case there are royalty payments made from a Brazilian entity to another entity abroad, license agreements should always be recorded before the Instituto Nacional da Propriedade Industrial (INPI). In addition, local taxes deductibility is limited by 5 percent from the revenue from the licensed technology, in accordance with Resolution No. 436/58 from Ministerio da Fazenda (Resolution No. 436/58).
Joint ownership is permissible, but a party cannot dilute the rights of another party without permission. A joint owner may assign its entire interest without consent of the other joint owner, provided that the assignment does not dilute the rights of another owner. Consent of all joint owners is required to grant a license.
The law does not provide for specific rules on the granting of a voluntary license for patents. However, the exclusive right of the holder to use and monetize their product includes the right to license these rights.
The law provides for limited cases in which the owner is obliged to grant a compulsory license. This is the case when a court has determined that the owner of the patent has acted against antitrust laws in direct connection with the use or exploitation of the concerned patent, for reasons of public health or national security or when the non-voluntary license is necessary for the exploitation of a subsequent patent that could not be exploited without infringing the earlier patent. In general, the applicant must first seek a contractual license from the rights holder.
Joint ownership is permissible. Unless otherwise agreed by contract, each party can use the patent on its own or grant a non-exclusive license to a third party on condition that the royalty is to be distributed among all the co-owners. However, mutual consent by all the co-owners shall be required for assignment, abandonment or enforcement of the patent.1
The ownership of the patents and its corresponding rights come into existence upon registration before the Superintendency of Industry and Trade.
The owner of a granted or pending patent may license or transfer patent rights to one or more third parties; exclusive licenses and transfers must be registered before the Superintendency of Industry and Trade. If they are not registered, it will be unenforceable against third parties.
Articles 59 and 60 of Decision 486 establish that the owner of the patent shall exploit the patented invention either directly or through an authorized person. For this purpose, exploiting the patent is understood as:
Upon the expiry of a period of 3 years following the day the patent was granted, or 4 years following the application for the patent, whichever is longer, an interested third party may request that the Superintendency of Industry and Trade grant a compulsory license for the industrial manufacture of the patented product or for the full use of the patented process, if at the time of such request, the patent has not been exploited or the exploitation has been suspended for more than a year. In any case, the owner of the patent might provide legitimate explanations for the non-exploitation, including force majeure and fortuitous events.
Nonetheless, Article 66 of Decision 486 foresees that:
"a compulsory license shall only be granted where the person who requests it has previously attempted to obtain a contractual license from the owner of the patent on reasonable commercial terms and conditions, and where that attempt has not had any effect within a reasonable time."
Joint ownership is permissible; a license cannot be granted by one joint owner without consent of the other joint owner(s). The relationship between the co-owners can be amended by an agreement. Implied licenses are recognized.
The inventor owns the patent. In the event of multiple inventors, all inventors have the right to obtain the patent and own the patent as joint owners. In case of joint ownership, the parties must receive consent of each joint owner to each significant transaction, unless the parties contractually agree to waive the duty to account to other joint owners.
A contractual license and compulsory license may be granted.
Patent rights are granted to the inventor or to the entity to which the inventor has transferred their rights. Patents can be freely transferred or licensed, wholly or partially. Joint ownership is granted for inventions with multiple inventors.
The "first to file" system is defeated in case of fraud and mitigated in case of prior personal possession.
Co-ownership is possible. In the absence of a co-ownership agreement, the relevant provisions of the French Intellectual Property Code automatically apply.
Assignments and licenses must be recorded at the INPI for opposability purposes.
There is a right of pre-emption by the French government, and mandatory licenses may apply in certain situations.
The licensee bears the obligation to exploit/work the patent in full.
Ownership can be transferred by contractual agreement. Joint ownership is possible. A transfer of ownership does not affect licenses that were granted before the transfer.
Licenses may be granted on an exclusive or a non-exclusive basis as well as to multiple parties. In joint ownership, licenses may be granted only with the consent of other rights holders.
Joint ownership is permissible. Subject to agreement to the contrary, each co-owner is entitled to an equal, undivided share in the patent and is entitled to exploit the invention for their own benefit. A license can only be granted with the consent of all co-owners unless they have agreed otherwise.
The right to a patent belongs to the inventor or their legal successor.
If 2 or more persons have jointly created an invention, the respective share of authorship of the inventors shall be deemed equal, failing any indication originally filed in the patent application to the contrary.
If 2 or more persons have jointly created an invention, entitlement for patent protection shall be vested jointly in them or their respective successors in title. Where entitlement is vested in 2 or more persons, their respective share in patent rights shall be deemed equal, failing any indication to the contrary.
If the patent has more than one owner, each co-owner may freely dispose of their own share. In respect of the share, of any co-owner the other co-owners shall have pre-emption right vis-à-vis third persons.
The patent may be exploited by any of the co-owners individually; however, they must pay appropriate royalties to the other co-owners in proportion to their respective shares.
Joint ownership of patents is possible, and the joint owners have an equal, undivided share in the patent, unless otherwise agreed between the parties. Unless an agreement to the contrary is in force, each person registered as an owner of a patent will be entitled, by themselves, to the rights conferred on an individual patent owner for their own benefit, without accounting to the other person or persons. A license or share in a patent cannot be granted or assigned by a joint owner individually except with the written consent of the other joint owners.
Assignment of patents is valid if made in writing and duly executed. Any person who becomes entitled by assignment, transmission, license or operation of law to a patent is required to apply for registration of their title to it, to the Controller.
Patent Law acknowledges the priority right as long the applicant has filled the patent application in the country which is a member of Paris Convention for the Protection of Industrial Property or Agreement Establishing the World Trade Organization. Patent law regulates that the right on the patent can become the object of fiduciary security.
A patent holder may grant a license to a third party to use and gain economic benefits of the patent under a license agreement. Based on Minister Regulation No. 8, a patent license agreement must be duly recorded, and the application for recording can be made electronically or in paper format. Recording is valid for a duration of 5 years and can be renewed. Minister Regulation No. 8 requires a copy of the patent license agreement, copy of the patent registration certificate, original power of attorney and proof of payment to be submitted. The applicant is also required to provide a statement letter stating that the object of the license agreement is still valid, shall not cause any losses to the national economy interest, shall not inhibit the development of technology and is not in conflict with the laws and regulations, morality and public order.
A patent may be registered to one individual or jointly among a number of persons.
It is possible to assign and/or license patents. There are certain formalities to be observed, depending on the nature of the license.
As with copyright, the basic rule is that the inventor is the owner of the rights. Subject to any agreement to the contrary, where an inventor is the employee of some other person, the employer is the owner of the invention created by the employee in the course of and during the period of their service (Service Invention), although the employee may be entitled to royalties from the commercialization of any such Service Invention.
In order for a license to be binding upon third parties, it must be recorded with the Israeli Patent Office.
Ownership of a patent may be transferred to third parties, as well as assigned by means of a license, authorizing the exploitation of the patent within the limits determined by the parties, such as exclusivity and sublicensing.
Exclusive and non-exclusive licenses and transfers of patent rights are recognized.
Joint ownership is permissible. Exclusive or non-exclusive licensing of the patent right, transferring or establishing pledge on the share of the patent right requires consent from all joint owners of the patent right.
The Patents Law provides that the patent rights are owned by the inventor or their successor in title.
In case of joint ownership, each co-owner has a personal right to exploit the invention or give non-exclusive licenses if they compensate the other owner(s). An exclusive license may, however, only be granted with the consent of all co-owners. Each co-owner may act against infringement actions or assign any rights of the patent, but they must notify the other co-owners thereof. In the latter event that one of the co-owners wishes to assign their share, the other co-owners have a pre-emption right over the proposed assignment for a 3-month period from the moment they have been informed of the intention to assign. In addition, the co-ownership regime as specified in the Luxembourg Civil Code (815 et seq.; 1973a-1 et seq and 883 et seq) is not applicable to patent co-ownership.
If a patent application is submitted only by 1 owner without the involvement of the other joint owner(s), the other joint owner(s) may initiate legal proceedings requiring the transfer of the patent or the patent application as joint owner.
In order to perfect the patent, registration is required before the IMPI.
Patents registrations and registrations in process may be encumbered, transmitted or licensed pursuant to commercial general provisions. Registration of the agreement is required before the IMPI to perfect an encumbrance, transmission or a license.
The Patents Act provides that the patent rights are held by the patent holder or their successor in title. If the public interest so requires, the competent ministry has the authority to grant a compulsory license.
The patent owner must grant a license required for the use of a patented invention granted in respect of an application which has the same or a later date of filing or, where a right of priority exists for the application, the same or later priority date, if the patent for which the license is requested represents a considerable advance; the patent owner shall, however, only be obligated to grant a license required for the working of a European patent after the time limit for filing an opposition to the European patent has expired or after pending opposition proceedings have been terminated. Such a license shall not extend further than is necessary for the application of the patented invention of the licensee. The latter shall be obliged to grant a reciprocal license under their patent to the owner of the other patent. If the abovementioned license is unjustifiably withheld, the license can also be granted by the court on a claim by the interested party. Such a compulsory license is rare.
A patent owner can license or assign some or all of their patent rights. Assignments must be registered.
Joint ownership is recognized and each patentee is entitled to an equal undivided share in the patent. Each patentee is entitled to exercise the exclusive rights given by the patent for the person's own benefit, without accounting to the others, but must not assign or license the patent without consent of all patentees.
In certain circumstances, the Commissioner may give directions to co-owners relating to the sale, lease or license of a patent or any interest in it. The court may also grant compulsory licenses if a market for the patented invention is not being supplied in New Zealand or is not being supplied on reasonable terms in New Zealand.
The owner of a patent is known as a patentee or statutory inventor or person who is the first to file the patent application or validly claim a foreign priority for a patent application. The true inventor is entitled to be named in the patent, whether or not they are also the statutory inventor, and the entitlement in question shall not be modifiable by contract.
A patentee may grant a license to any person to exploit the relevant invention or process. Such license must be in writing, signed by the parties and registered with the Patent and Design Registry. Failure to register the license affects its validity.
A patent may also be held jointly by joint-patentees. In the absence of any prior agreement to the contrary between the joint-patentees, each right holder may separately transfer their right to exploit the patented invention. In the case of a license to use a patented invention that is held by joint patentees, such license must be awarded jointly, and failure to obtain a joint grant affects the validity of the license.
A compulsory license may be granted by the court upon the expiration of a period of 4 years after filing a patent application or the expiration of 3 years after the grant of a patent, whichever period occurs last. The license entitles the licensee to make, import, sell, use and stock the patent for the purpose of sale or use. It, however, does not entitle them to grant further licenses and may contain additional obligations and restrictions. It may be transferred only with the industrial undertaking in which the relevant invention is used, and the transfer may only be valid with the consent of the court. The application for a compulsory license is brought to the court on 1 or more of the following grounds:
The inventor owns the patent unless otherwise assigned. Others cannot, without consent from the inventor or their successor in title, use the invention.
Joint ownership is permissible, and, in case of joint ownership, use within its ordinary business operations are allowed without further agreement, and the parties must receive consent of each joint owner to each significant transaction, unless the parties contractually agree to waive the duty to account to other joint owners.
Contractual license and compulsory license may be granted.
In order to obtain exclusive rights, registration is required before the National Patent Office.
Patent registrations and registrations in process may be transmitted or licensed. Registration before the National Patent Office is required to perfect a transmission or license.
The right to a patent belongs to the inventor, their heirs or assigns. When 2 or more persons have jointly made an invention, the right to a patent shall belong to them jointly.
Philippine jurisdiction adheres to the first-to-file rule. If 2 or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application with the earliest filing date or earliest priority date.
The IPC also provides for both compulsory and voluntary licensing regimes.
Joint ownership of a patent or the right to a utility model is possible. A co-owner may, without the consent of the other co-owners, use the patent or utility model to the extent to which the right belongs to him and may pursue claims against third parties for infringement.
It is also possible to transfer a patent or the right to a utility model, although it must be done in writing – otherwise the transfer will be null and void. The same applies to licenses.
Licenses may be granted on an exclusive and non-exclusive basis. However, only the holder of an exclusive license (which has to be recorded in the patent register) may pursue claims for infringement of the patent, unless the license agreement provides otherwise. A licensee may grant a further license only upon the consent of the licensor (further sublicensing is prohibited). A license that does not limit the scope of patent use is regarded as a license granting full rights as exercised by the patent holder.
The license remains effective towards the new owner of the patent or a right to the utility model.
Patents can be transferred in writing 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 Portuguese Institute of Industrial Property to be effective against third parties.
Joint ownership is permissible, and patent rights must be exercised in common. If the inventor is an employee, the employer owns the rights over inventions resulting from the exercise of the inventor's job specifications expressly mentioned in their employment agreement and in the job description sheet, or mentioned in other binding material for the inventor that provides for an inventive mission. In addition, the employer owns the rights over inventions created while the inventor is an employee, as well as over inventions created after termination of employment for a maximum of 2 years after the termination of the employment agreement, by knowing or using the employer's experience and material resources, as a result of the professional training offered to the employee at the expense of the employer or by the use of information derived from the employer's activity.
Ownership of (or exclusive right to) a patent may be transferred to third parties by means of assignment, as well as license, authorizing the exploitation of the patent within the limits determined by the parties. Transfers of ownership and exclusive licenses must be registered to be effective.
A patent may be assigned or licensed to a third party by the registered owner, in accordance with the requirements of the Patents Law.
There are certain circumstances where compulsory licenses may be granted by KACST to a third party to exploit an invention covered by a patent.
Patent owners may prevent others from exploiting their inventions, use the patents to raise funds for their businesses, license the patents to third parties for commercial returns or sell the patented inventions.
Patent owners interested in licensing their patents to a third party may endorse such patents with a license of right (LOR) after they are granted, by way of applying for an LOR entry to be made in the Patents Register. An LOR may help a patent owner attract licensees and reduce the amount of renewal fees that are payable after the LOR entry is made.
The owner of a patent is the natural or legal person registered in the register of the Industrial Property Office as the owner. The joint ownership of a patent is allowed. The Industrial Property Office will register a co-owner upon an application accompanied by a written agreement concluded between the owner or co-owners of a patent and the person who has the right to invention.
The owner may grant another person a license to their patent upon the conclusion of the license agreement. A license shall have legal effects towards third parties upon registration in the register of the Industrial Property Office.
Under the Patent Act, if the employee creates the patent within the employment relationship, the employer has the right to register the patent with the Industrial Property Office.
Joint ownership of patents is recognized. Both exclusive and non-exclusive licenses are available.
Both patent applications and patents shall be transferable and may be the subject of licenses. They may also be used as security for personal loans, which shall be governed by the relevant provisions, and such use shall be notified to the Security Rights section of the Registry of Movable Goods. To be valid, these acts shall be in writing when performed inter vivos (between the living).
Both patent applications and patents may be the subject of licenses covering the whole or part of the elements constituting the exclusive rights, for all or part of the Spanish territory. Licenses may be exclusive or non-exclusive. Unless otherwise agreed, a license shall not be deemed to be exclusive and the licensor may grant licenses to other persons and work the invention themself.
Patent rights are granted to the inventor or the inventor's successor in title. In case of a jointly developed invention, joint ownership will be granted. It should be noted that the law does not provide specific details concerning joint ownership. Thus, to avoid disputes, joint owners should consider entering into an agreement concerning the use and management of the patent right in question.
Licenses may be registered. However, registration of licenses is not compulsory and does not affect their validity.
Co-ownership is permissible. With certain exceptions, no license can be granted without the consent of all co-owners. Each co-owner can dispose of his part and take action against infringement of the patent without the consent of the other owners.
A patent can be assigned, licensed, pledged or inherited. In case of joint ownership of a patent, any single owner is not entitled to assign, license or pledge their own share of such patent without the unanimous consent of all joint owners. If a joint owner of the patent abandons their share, the abandoned share shall be allocated to the other joint owners according to the percentage of their respective shares within the joint ownership.
Under Ukrainian law, the inventor is the initial intellectual property rights holder.
The persons who created an invention or utility model jointly are considered as co-authors under Ukrainian law. The exclusive rights with respect to an invention or utility model created in co-authorship are vested with all co-authors. Relations between co-authors are regulated by an agreement between them.
The right holders may grant the right to use or assign their rights to other parties through a license or assignment agreement, which should be made in writing. The assignment of patent rights is subject to mandatory registration with the Ukrainian IP Office. Ukrainian law prescribes that compulsory license to inventions or utility models may be imposed in certain cases.
Both patent applications and granted patents can be assigned. Assignments must be executed in accordance with the Patent Law and recorded in the register. Both assignments of applications and granted patents are subject to the vetting procedure of the Department of Industrial Property and may be rejected on a wide range of grounds.
The owner may license the use or exploitation of "the right [which is] the subject of the protection" (Patent Law Article 54). The licensor should be able to license the various rights separately, for example, he should be able to give the right to produce the product (in the case of a product patent) to one person and the rights to offer it for sale and sell it to another, subject to approval from the Department of Industrial Property.
Article 54 of the Patent Law provides that the license term may not exceed the term of protection given by the law so no license can grant rights that exceed the term of patent protection. If no term is expressly stated in the license the term of the license is deemed to be the entire term of the patent.
All licenses are deemed to be non-exclusive unless they are expressed to be otherwise, similarly all licenses are deemed to be for "all the lands of the state" unless stated otherwise (Patent Law Article 57(1)). This means that the licensee is permitted to exercise its rights under the license anywhere in the UAE unless the license expressly states otherwise.
The licensee has the right to prevent infringement or threat of damage to the patent, however, the licensee may only instigate legal and judicial proceedings and demand compensation after the licensee has informed the patentee by registered letter and the patentee does not undertake the "necessary procedures" within 30 days of notice (Patent Law Article 57 (2)).
The UK has a first-to-file system. Subject to an employee’s responsibilities and duties, ownership of employee-inventions will normally vest in the employer, though it is best to expressly provide for this in the employment contract.
Co-owners are considered to have an equal undivided share in a patent subject to agreement to the contrary and consequently cannot assign or license their share without consent of the other unless otherwise agreed, which may pose challenges for co-owners in exploiting their inventions
There are certain advantages to be obtained from registering assignments (or assignations in Scotland) and licenses (eg, binding third-party acquirers), but there is no strict requirement to do so.
When granting licenses, it is generally advisable to include quality control and use provisions and controls on sublicensing.
Joint ownership is permissible, and parties may contractually agree to waive the duty to account to other joint owners. A license can be granted by 1 joint owner without consent of the other joint owner. Implied licenses are recognized.
