Tuesday, March 8, 2011

The licensing of industrial property rights

The licensing of industrial property rights are three types of securities: patents, trademarks, designs and models. These are all contracts that contain guarantees to which the purpose is to protect the co-contractors identified.
The licensing of industrial property rights are three types of securities: patents, trademarks, designs and models. These are all contracts that contain guarantees to which the purpose is to protect the co-contractors identified. The patent license agreement
The license agreement in general is a contract whereby the holder of an industrial property right (patent, trademark, design or model) grants to a third party, in whole or in part, the enjoyment of his right to operate, free or for a fee, upon payment of fees or royalties. Thus, for the patent license, the owner of a patented invention to a person admits such a pleasure. It is more precisely an agreement sui generis under the law of lease of things, under Article 1709 of the Civil Code provides: "The lease deal is a contract whereby one party undertakes to make enjoy the other about something for a while, and for a price that it is obligated to pay him. "
We talk convention sui generis, because it illustrates a legal position which prevents the singular nature of the rank in a legal position is already known.
The patentee is specialized in a specific field and has developed an invention on the basis of which it has filed patent applications. These patent applications, patents that will result and any improvement patents, patents will be called the contract. As the licensee, he wishes to manufacture and market products that comply with the contract for patent applications specified in the clauses.
The patent license agreement is a contract between two parties: the licensor and licensee.
Four types of licenses are possible:
- Total license: The licensee is entitled to exploit the patent for all possible applications (medical, agricultural ...) and for all modes of operation (manufacturing, sale, use ...);
- The partial license: The licensee is permitted to exploit the patent for certain applications or certain modes of operation;
- The simple or non-exclusive license: gives the possibility of granting multiple licenses for the same patent for the same modes and fields of application and on the same territory. Patented products can be marketed in various professional circuits. The licensor can ensure that the licensee will not grant other licenses more than X's patent agreement, and that its other licensees impose certain limitations.
- The exclusive license: the patent holder agrees not to grant other licenses of the same patent for the same applications on the same territory. If stipulated in the contract, the patent owner can exploit his invention in person. For this type of contract, the licensor grants the licensee an exclusive license under patent. The licensee may then legitimately manufacture, sell and / or use contract revenue, and / or implement the process of said Contract in the relevant field. According to the letter of the clause, the licensor will have the option whether to use the patent granted.
On the other hand, a clause on the guarantee paid by the grantor is frequently stated in the license agreements. It is generally intended to exclude or limit such guarantee. The grantor is still required to guarantee his personal act, that is to say the warranty against eviction, guaranteeing public order, as provided in section 1626 of the Civil Code.
The licensor is responsible for the mistakes he makes, especially in the contract when it is guilty of fraud. When the license is granted at the risk of the licensee or when it accepted the danger of possible eviction, the grantor may be released from the warranty against hidden defects and / or because others, particularly if :
- The licensee is convicted following an infringement action exerted by a third party (in this case, the licensee may no longer exploit its patent license agreement will be terminated with or without damages to the licensee was good or bad faith);
- The patent would be invalidated invalidates the license agreement for failure to object.
The Licensor may then insert the following warranty clause: "The Licensor represents that it has the full and free enjoyment of patents of the contract, that these patents or patent applications are scheduled administratively and all related taxes are paid. In addition, Licensor hereby warrants to Licensee that the physical existence of such patents in this contract to the exclusion of all other warranties. "
It can also insert the clause: "The Licensor gives no warranty, other than the eviction by his personal and material existence of patents. The Licensee acknowledges having read all documents and information relating to the patent, and claims to be fully informed as to its validity. Licensee accepts the license knowingly at his peril. In case the patent would be declared forfeited by a bare or final court decision, the Licensor agrees to indemnify the Licensee for the damage suffered to the extent the amounts he has collected under the fee during the year preceding the date of delivery of the decision. "
Extensive warranty clauses are valid, while the covenants can not be invoked for the contractor in good faith. With regard to material defects, the licensor guarantees the technically exploitable of the invention.
On the other hand, covenants not guarantee against hidden defects are valid if the licensor is in good faith or under a licensing agreement between professionals of the same specialty. In all cases, any compensation the licensee is excluded.
Finally, the minimum guarantee clause payable by the grantor can be formulated as follows: "The Licensor gives no warranty other than that resulting from his personal and material existence of the patent. " The trademark license contract
The trademark license is a contract by which the trademark owner gives another the right to exploit in whole or in part, a fee often consisting of charges corresponding to the operation known as royalties.
As the patent license, the license agreement can be registered between a licensee and a sub-licensee to the extent that the licensee is authorized to grant sub-licenses. Free licenses are available. On the other hand, the trademark license allows a trademark owner to take advantage of some markets it can not operate directly. As the licensee, it enjoys the reputation of the brand to market the products it manufactures. The license can only cover items contained in the deposit. A license for other products, even similar, would be zero. The Court admitted in a ruling dated March 3, 1987. The trademark license may be exclusive or not: it is when the trademark holder undertakes to grant to other licensees on the same territory, a license from the same brand for the same products or services.
The licensee has many obligations to his co-contractor, including an obligation to guarantee the same diet as that of the patent license.
There are three types of guarantee:
- Guarantee of crowding out others, if the licensee is sued for infringement by third parties, the licensor will have to defend under its guarantee obligation of crowding out others. If the action succeeds, the licensee is evicted, and unless otherwise stipulated, the licensor shall indemnify the licensee. This warranty is not of public order, the parties may include a clause limiting or suppressive guarantee favorable to the licensor. But the licensee's interest to require the licensor inclusion in the contract of a guarantee clause.
- The payment of royalties in case of dispute: the possibility to foresee that the licensee will pay upon service of summons, the fees payable to the licensor in a special account which blocked the release will be made as soon as the resolution will force of res judicata. If successful action brought by a third, the royalties will be paid blocked due to competition for the costs incurred by the licensee and the damages charged to it. In case of failure of the action, the fees paid will be blocked in their entirety to the licensor.
- Drafting of a clause suppressive guarantee: this clause has no effect if the licensor is in bad faith. This clause provides no guarantees the licensor to pay damages to the licensee, and give no guarantees other than that of his personal-guarantee public order, and that of the material existence of the title given licensed. Conversely, parties may provide a guarantee of extensive liability on the said licensor. Finally, it is possible to specify in the contract that prior art searches and brand name have been made regarding the make-up license, to verify the availability of this brand. Licensor may provide to the licensee a copy of this research so he knows where the mark. This obligation is especially made for laws that do not submit the application for trademark registration to a prior art search.
The drafting of clauses may be as follows (see: Licensed brand, Forms, Tips, Camille Guthmann, Juris-Classeur Literary and Artistic Property, Issue No. 7402, 1998.) "If the trademark license granted by the subject of a complaint or an infringement suit against the Licensee by a third, the Parties shall consult at the earliest opportunity to set their defense. In addition, Licensee shall pay upon service of summons, the fees and the guaranteed minimum royalty due to Licensor in a special account which blocked the release will be made as soon as the resolution will force of res judicata, based on result that the proceedings are conducted: - If convicted of the Licensee, the royalty will be blocked paid pro rata to cover the costs incurred by it and the damages charged to, - In case of failure of the action taken by the third party, the royalties will be blocked paid in full by Licensor. "
To guarantee an exclusion clause or "risk and peril, it can be stated: "The Licensor gives Licensee no other security than his personal and material existence of the mark. Thus, this license is granted and accepted the sole risk of Licensee expressly acknowledges. Licensee acknowledges the prior art search and report dated ... ... ... on the mark for the following countries: ... ... ... .... " The license agreement for design and pattern
This contract is an exclusive license for all or part of the design. It focuses on designs with a number assigned by the National Institute of Industrial Property (INPI), and filed with the agency, as well as models using the same procedure. The operation of drawing and model covered by this right will be restricted to the manufacture and marketing of objects in particular.
In case of doubt as to whether product supports field-contract, the licensee shall consult with the Licensor will give written response. The contract is for an annual fee determined by the parties in general on turnover achieved by the licensee in respect of products manufactured under the design contract, and sold.
Safeguards exist mostly to protect the licensee. They can be formulated as follows: "The Licensor hereby ignore the existence of any rights that may conflict with the prerogatives purpose of this Convention. The Licensor will ensure that any damage aside from the drawing or model contract could lead to the Licensee. Licensor warrants that the Licensee could cause him damage infringement actions brought by third parties. Expenses as the Licensor may need to pay to the Licensee will be capped at the amount of money he would have received under this contract. Finally, the Licensor warrants that the Licensee does not manufacture or market products incorporating the designs of the border drawing and model subject to this Agreement. If in doubt, consult with the Licensee will give Licensor written response. "
All the clauses mentioned above regarding industrial property rights have similarities editorial. Their goal is the same, namely the protection of the contracting parties, through the interplay of various guarantees.

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