License means permission to perform a specific action. The legal term refers to a document or administrative act. Licensing refers to objects of intellectual property that can be used repeatedly by different persons in different forms at the same time. The needs in connection with these objects are certified by legal transactions – of domestic or international law. The license agreement is remunerated and its subject is the license.
There are several criteria on which basis we can distinguish different license agreements.
First of all, the types of license agreements are according to the volume of transferred rights.
Here we distinguish three types:
For a full license – within the period of validity of the license agreement the licensee is granted all the rights of the licensor of the object of licensing, except the right of ownership.
For an exclusive license – the licensor loses the right for a certain territory to use and grant other licenses for intellectual property objects for which a license has already been granted.
For a non-exclusive license – the licensor assigns rights to the intellectual property of the licensee. Characteristically, the licensee reserves the right both to operate the object of the license and to grant licenses to other interested parties.
Next we have licenses according to the legal protection on the subject of the contract.
Patents that relate to objects such as inventions, utility models, industrial designs, trademarks and others that are protected by intellectual property.
Non-patents are respectively for objects that are not protected by a patent or for “know-how” agreements.
The subject of the contract for the transfer of know-how is a monopoly on knowledge, skills, experience. The contract itself provides it to the party for which they are inaccessible. The licensee undertakes to keep them in secret. The licensor explains them to him and makes them as accessible and easily digestible as possible. The term was introduced in 1953 in American law. Thus, to date we distinguish two types: know-how of a technical nature and know-how of an economic nature.
Combined licenses are the third type. They are contracts for objects protected by documents of exclusive right or for know-how contracts for franchising.
In addition to the above, we have types of licenses that do not have a single classification feature.
The first type are sub-licenses granted by the licensee to an exclusive or full license to third parties. The only condition for granting sub-licenses is that there is no clause in the initial licensing agreement that explicitly prohibits this.
Next are the cross-licenses, in this case the licensee provides the licensor with a fee as a form of payment for the license.
The compulsory license is granted by a competent state body by virtue of an administrative act. It aims to prevent the abuse of the patent monopoly. It is regulated in Art. 32 of the Law on Patents and Registration of Utility Models, as it specifies the conditions necessary for the granting of the license to an interested person.
We also distinguish a compulsory cross-license. Here, we have two patent holders who simultaneously grant each other the right to use the other’s patent.
There are many types of licenses and everybody can use them, according to their needs. Licenses provide big opportunities, because the contract is always advantageous for both parties.
Author: Temenuga Dimova