Commercial Agreements, Licences and Assignments

In many supply, service, agency, software development and collaboration agreements, intellectual property changes hands without anyone noticing, or fails to change hands when it should. We assess and rewrite your commercial agreements from an intellectual property perspective, prepare licence and assignment agreements, and handle processes for assigning economic and moral rights.

What is the difference between an assignment and a licence of intellectual property?

In an assignment, the intellectual property right passes to the other party and the assignor is no longer its owner. In a licence, the owner keeps the right and permits the other party to use it on certain terms. A licence may be exclusive, meaning only the licensee may use it, or non-exclusive.

Under the Law on Intellectual and Artistic Works, assignments and licences of economic rights in works must be in writing and must list the rights assigned or licensed, namely the rights of adaptation, reproduction, distribution, performance and communication to the public, one by one. Agreements relating to industrial property rights such as trade marks and patents must also be in writing and cannot be relied on against third parties acting in good faith unless they are recorded in the register.

Who owns work commissioned from an agency or software firm?

Unless the agreement expressly provides otherwise, the rights in a design, text or software produced by an agency or software firm generally remain with the creator; the company may obtain a right to use it only to the extent of the agreement’s purpose. For every commissioned work, the scope, duration and price of the assignment should therefore be written clearly into the agreement.

Scope

• Assessing all types of commercial agreements from an intellectual property law perspective, analysing the risks and rewriting them
• Handling intellectual property assignment processes for goods and services the company produces or purchases
• Preparing all documents the company needs for the assignment of economic and moral rights
• Preparing licence and assignment agreements and reviewing existing agreements
• Identifying and meeting the obligations owed to third parties in the company’s commercial dealings
• Assessing commercial disputes from an intellectual property law perspective and analysing the risks

How We Work

1. Identifying the company’s commercial agreements and the intellectual property that changes hands under them
2. Assessing ownership, assignment and licence provisions in each agreement
3. Preparing proposed amendments and additional protocols for missing or risky provisions
4. Drafting and negotiating new licence and assignment agreements
5. Carrying out supplementary steps such as recording trade mark and patent assignments in the register