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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy 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 work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

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

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially 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

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    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.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    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.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Patents

Ownership / licenses

Argentina

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.

Australia

A patent owner can 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 can 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 can be co-owned. Co-owners can exercise their exclusive rights without accounting to the other. Co-owners cannot grant a license or assign their interest without consent of the other co-owners.

Austria

The inventor or his or her 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).

Belgium

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 his or her share, the other co-patentees have a pre-emption right over it for a three-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.

Brazil

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).

Canada

Joint ownership is permissible, but one 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.

Chile

No text yet.

China

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

1Certain judges hold the view that mutual consent by all the co-owners may not be required for enforcement of a jointly owned patent in China, stating that each owner shall have the right to initiate an infringement lawsuit and that the court shall have the authority to add in the other co-owners as a "party of interest."

Colombia

The owner of a granted or pending patent may license the patent rights to one or more third parties, but the license must be registered before the SIC. If the license is not registered, it will be unenforceable against third parties.

Articles 59 and 60 of Resolution 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:

  • the industrial manufacture of the patented product or the full use of the patented process in a manner sufficient to meet the needs of the market and
  • the import of the patented product, including distribution and marketing, where it is done on a scale sufficient to meet the needs of the market

On the expiry of a period of three years following the day the patent was granted, or four years following the application for the patent, whichever is longer, an interested third party may request that the SIC 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, as per article 66 of the Resolution 486:

"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."

Utility models

The rules regarding ownership and licenses of patents of inventions are applicable to patents of utility models.

Czech Republic

Joint ownership is permissible; 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.

A compulsory license may be imposed.

Denmark

The inventor owns the patent. Joint ownership is permissible and 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.

Contractual license and compulsory license can be granted.

Finland

Patent rights are granted to the inventor or to the entity to which the inventor has transferred his rights. Patents can be freely transferred or licensed, wholly or partially. Joint ownership is granted for inventions with multiple inventors.

France

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 will 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.

Germany

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 and to multiple parties. In joint ownership, licenses may be granted only with the consent of other rights holders.

Hong Kong

Joint ownership is permissible. Subject to agreement to the contrary, each of the co-owners is entitled to an equal, undivided share in the patent and is entitled to exploit the invention for his or her own benefit. A license can only be granted with the written consent of all co-owners unless they have agreed otherwise.

Hungary

The right to a patent belongs to the inventor or his legal successor.

If two 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 two 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 two 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 his or her own share. In respect of the share of any co-owner the other co-owners shall have pre-emption right vis-á-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.

India

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 himself, to the rights conferred on an individual patent owner for his 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 his title to it, to the Controller.

Indonesia

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 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, patent license agreement can 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 that copy of the patent license agreement, copy of the patent registration certificate, original power of attorney and proof of payment to be submitted. 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 not in conflict with the laws and regulations, morality and public order.

Ireland

A patent may be registered to one individual or jointly among a number of persons.

It is possible to assign and/or licence patents. There are certain formalities to be observed, depending on the nature of the license.

Israel

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 his or her 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.

Italy

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).

Japan

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.

Luxembourg

The Patents Law provides that the patent rights are owned by the inventor or his 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 he has to notify the other co-owners thereof. In the latter event that one of the co-owners wishes to assign his share, the other co-owners have a pre-emption right over the proposed assignment for a three-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 one 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.

Mexico

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.

Netherlands

The Patents Act provides that the patent rights are held by the patent holder or his/her successor in title.

If the public interest so requires, the competent ministry can 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 his or her 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.

New Zealand

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.

Norway

The inventor owns the patent, unless assigned. Others cannot, without consent from the inventor or his 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 can be granted.

Poland

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.

Portugal

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.

Romania

Joint ownership is permissible and patent rights must be exercised in common. If the inventor is an employee, the right to the patent belongs to the employer for (i) inventions made by the employee in the performance of a labor contract that provides for an inventive task entrusted explicitly, which corresponds to his/her functions or (ii) inventions made by the employee either in the exercise of his office or after the termination of the labor agreement for a period of no more than two years by knowing or using the technique or the specific means or data of the employer.

Russia

Ownership of (or exclusive right to) a patent may be transferred to third parties by means of assignment, as well as licensed, 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.

Saudi Arabia

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. 

Singapore

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. 

Slovak Republic

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/co-owners of a patent and the person who has the right to invention.

The owner may grant another person a license to his/her patent. A license shall have legal effects towards third parties upon registration in the register of the Industrial Property Office.

South Korea

Joint ownership of patents is recognized. Both exclusive and non-exclusive licenses are available.

Spain

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 himself.

Sweden

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.

Switzerland

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.

Taiwan

The patent can be assigned, exclusively or non-exclusively licensed, pledged or inherited. Joint ownership is permissible and, unless the joint owners agree otherwise, each of the joint owners is entitled to exploit the patent for his or her own benefit. However, any single owner of a patent is not entitled to assign, entrust, license, pledge, abandon the patent or to assign, entrust or establish a pledge on his or her own share of such patent without the unanimous consent of all joint owners. If a joint owner abandons his or her share of a patent, the abandoned share shall be allocated to the other joint owners according to the percentage of their respective shares in such patent.

Ukraine

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 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/utility models may be imposed in certain cases.

United Arab Emirates

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)).

United Kingdom

The UK has a "first to file" system. Subject to an employee's responsibilities and duties, ownership will normally vest in the employer.

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.

There are certain advantages to be obtained from registering assignments or assignations 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.

United States

Joint ownership is permissible and parties can contractually agree to waive the duty to account to other joint owners. A license can be granted by one joint owner without consent of the other joint owner. Implied licenses are recognized.