Intellectual Property and Licence Agreements

A technology company’s most valuable asset is often its intellectual property: its software, algorithms, brand and designs. We prepare intellectual property assignment and licence agreements for technology companies and investment funds, making sure the company’s intellectual property really belongs to the company and is protected in the eyes of investors.

What is a licence agreement?

A licence agreement is a contract under which the owner of an intellectual property right, while keeping the right, permits another party to use it on certain terms. A licence may be exclusive, meaning only the licensee may use it, or non-exclusive. The term, field of use, territory, right to sub-license and licence fee are set out in the agreement.

An assignment, by contrast, transfers ownership of the right to the other party. Under the Law on Intellectual and Artistic Works, assignments and licences of economic rights in works such as software must be in writing and must list the rights transferred one by one; otherwise the transaction may be invalid.

Why does intellectual property matter so much before an investment?

Investors want to be sure that the intellectual property making up the company’s product belongs to the company. If the legal position of code developed by the founders before the company was set up, of software produced by freelancers or of the open-source components used is unclear, it can delay the investment or lower the valuation.

Scope

Preparing intellectual property and licence agreements for technology companies and fund ventures
Obtaining intellectual property assignments from founders, employees and freelancers
Software licence, SaaS and technology transfer agreements
Pre-investment intellectual property review

How We Work

Identifying the company’s intellectual property assets and who created them
Identifying missing assignments and risky uses of licences
Preparing assignment, licence and confidentiality agreements
Assessing the need for trade mark, design and patent registrations
Negotiating intellectual property representations and warranties in the funding round

Team

Enes Duran Associate

Burcu Kulotu Associate

Sercan Dolanbay Associate - Trademark Attorney

Frequently Asked Questions

Does code a founder wrote before the company was set up belong to the company?

Not automatically. Code developed before the company was incorporated belongs to the founder who wrote it. For the code to belong to the company, a written intellectual property assignment from the founder to the company must be obtained; investors always ask about it in due diligence.

Is using open-source software a risk?

Using open source is common and usually unproblematic, but some licences require the source code of derivative software to be shared under the same licence. If the product is to be commercialised as closed source, the licences of the open-source components used should be checked in advance.

Does software developed by an employee automatically belong to the company?

For works created by an employee in the course of their work, the economic rights belong to the employer unless otherwise agreed. Even so, setting out this matter, and the status of work developed outside the job, clearly in the employment contract prevents later disputes.

What is the difference between a SaaS agreement and a software licence?

Under a software licence, the customer installs and uses the software on its own systems. In the SaaS model, the software runs on the provider's servers and the customer accesses it as a service. SaaS agreements should also cover service levels, data security, the processing of personal data and the return of data when the service ends.

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