There are different forms of intellectual property that are recognized worldwide. We have trademarks for brands, patents for inventions, the copyright for works of art and controversially for software, know-how for trade secrets. All of these guarantee the brand owner, the inventor and the author a package of intellectual property rights. These rights are the essence of intellectual property. How far they reach determine what constitutes infringement and what not when utilizing or otherwise using the property. The rights that are reserved for the owner of the intellectual property can be assigned or licensed to third parties. In this short article, we will examine both of these options.
Assignment of IP rights
Assignment means the transfer of ownership over the intellectual property. A common example of an assignment of IP is the transfer of a trademark from one entity to another. Once the assignment is finalized the first entity can no longer use the trademark in its business. Simply the owner of the trademark has changed.
Licensing of IP rights
Licensing means granting permission to do what otherwise would be considered an infringement of intellectual property rights. Keeping in mind the example above, here the owner of the trademark remains the same but another entity is granted the right to also use the trademark under certain license conditions.
The exclusive and non-exclusive license
License is considered advantageous because it allows the owner of the intellectual property to retain some of their rights while granting others to multiple third parties – licensees. An exclusive license is created when a licensee has conferred a license to the exclusion of others, including the grantor of the license. An exclusive licensee has the same rights of action and remedies as the right owner. It is a lot like assigning the rights.
A non-exclusive license is a widely preferred option since it gives more freedom to the licensor who can also exercise or even further license their intellectual property rights.
How to sign a license or an assignment agreement
Before explaining the requirements for a license agreement we must first state that different objects of intellectual property rights are protected under different regimes in Singapore. There are registered intellectual property rights like trademarks and patents and tights that occur upon the creation of the intellectual property – copyright and know-how.
For registered intellectual property rights, it is often a requirement that a license be in writing to be effective. In Singapore, this applies to trademarks but not to patents. However, it is advisable to always draft your license agreements in writing. Copyright licenses should also be signed in writing as required by the Copyright act.
You should keep in mind that there are instances of co-ownership of intellectual property rights, especially for patents and trademarks. In such cases, all co-owners of the rights must sign the respective agreement.
How to register an agreement?
You need to register a license or an assignment agreement if the subject of the agreement is a registrable intellectual property rights. Even if not registered the agreement will still be effective between the parties that signed it. However, that license would be ineffective against a person acquiring a conflicting interest in the right in ignorance of the licence.
What to include in your agreement?
If you are looking for an assignment agreement, here are the more important characteristics of your contract:
- Who are the parties involved?
- What is being assigned?
- What are the price and payment terms?
- When is the assignment complete?
- How will the assignment be registered?
For license agreements make sure to include:
- Who are the licensor and the licensee?
- What are the intellectual rights that are to be licensed?
- What can the licensee do with the subject of the license?
- Is it an exclusive or non-exclusive license?
- What is the duration of the license?
- What are the price and payment terms?