A comparision between transfer of industrial property rights and use right to industrial property objects

CRITERIA

TRANSFER OF INDUSTRIAL PROPERTY RIGHTS

TRANSFER OF USE RIGHTS OF INDUSTRIAL PROPERTY OBJECTS

Definition

  Transfer of industrial property rights means the trademark owner  transfers the ownership right to another organization/individual

Transfer of the right to use an industrial property object means that the owner of an industrial property object permits another organization or individual to use an industrial property object within the scope of his/her use right.

Subject

The transferor must be the owner of the industrial property object

The transferor may be the owner or the transferee with the permission of the owner of the industrial property object.

Objects

Ownership

Use right

Nature

• Form of purchase and sale: The transferor (the seller) transfers the ownership of the industrial property object to the right recipient (the buyer).
•  The assignor will terminate ownership of the IP object and establish ownership for the right recipient.

- Form of transfer of the right to use (Li- petrol):

+ The transferor still has the right to own the industrial property object.

+ The transferee does not have the right to industrial property but is only allowed to use it within the permitted scope of the industrial property.

Contract

• Classification of contracts: There is only 1 type of IP transfer contract
• Content contract:

+ Full name and address of the assignor and assignee;

+ Grounds for transfer;

+ Transfer price;

+ Rights and obligations of the assignor and assignee

• The transfer of the right to use an industrial property object must be done in the form of a written contract (a contract to use an industrial property object).
• Contract classification: 3 types
• An exclusive contract is a contract under which, within the scope and term of the assignment; the licensee has the exclusive right to use the IP object; the licensor may not contract to use any third party; and may only use such industrial property object with the permission of the licensee;

- A non-exclusive contract is a contract under which the scope and term of the right to use is transferred; the licensor still has the right to use the industrial property object and the right to enter into a non-exclusive contract for the use of the industrial property object with another person.

+ A contract to use a secondary industrial property object is a contract in which the licensor is the person to whom the right to use is assigned.

• Content:

+ Full name and address of licensor and licensee

+ Grounds for transfer of the right to use;

+ Type of contract;

+ Scope of transfer, including limitation of use right and territory limitation;

+ Contract term;

+ Fee for transferring the right to use

Validity

An IP transfer contract is only valid when it has been registered at the NOIP.

• The contract to use industrial property object is valid according to the agreement between the parties, but only valid for a third party when it has been registered at the state management agency of industrial property rights.
• The contract to use industrial property object is automatically terminated if the transferor's industrial property rights are terminated.

Limitations

+ Owners of industrial property rights may only assign their rights within the protected area.

+ Rights to geographical indications are not transferable.

+ The right to a trade name can only be transferred together with the transfer of the entire business establishment and business activities under that trade name.

+ The transfer of rights to the mark must not cause confusion about the characteristics and origin of goods or services bearing the mark.

+ The right to a mark may only be transferred to an organization or individual that meets the conditions for the person having the right to register that mark.

+ The right to use geographical indications and trade names is not transferable.

+ The right to use a collective mark may not be transferred to an organization or individual that is not a member of the owner of that collective mark.

+ The licensee may not enter into a secondary contract with a third party, unless otherwise permitted by the licensor.

+ The licensee of the right to use the mark is obliged to write instructions on the goods and goods packages about the fact that such goods are manufactured under the contract to use the mark.

+ The party that is licensed to use the invention under an exclusive contract is obliged to use the invention like the owner of the invention.