Assignments & Licenses

Exclusive rights to an IP object can be assigned by its right holder, whether in full or in part, to a third party.

Under a license agreement, the right holder (licensor) grants to a third party (licensee) the right to use an IP object.

Under current legislation of the Republic of Kazakhstan there are two main types of license for IP objects:

  • a simple non-exclusive license under which the right holder grants the right to use the IP object and may license it to third parties and retains the right to use an issue licenses to the third parties;
  • an exclusive license under which the right holder grants the right to use the IP object, but may not license it to any third party;

The licensee may enter into a sub-license agreement only if it is permitted by the relevant license agreement.

In case of IP objects (inventions, trademarks, etc.), the like of which must be registered for the title to emerge assignment and license agreements must be registered with the authorized agency (the Committee). Failure to register an assignment agreement or a license agreement may lead to their invalidity.

For certain IP objects, the legislation establishes specific requirements for license agreements. For example, the license agreement for use of a trademark must stipulate that the quality of goods/products manufactured by the licensee may not be inferior to those produced by the licensor, and that the licensor may control the compliance with that requirement.

In addition, there are certain restrictions in relation to assignment of rights. For example, the assignment of rights to a trademark is prohibited when it can be misleading as to goods or its producer.

We offer the following services related to assignment and license agreements:

  • Drafting of assignment and license agreements;
  • Drafting, filing and follow up of applications for registration of agreements;
  • Legal advice in relation to the rights to IP objects assigned under an agreement;
  • Drafting of memorandums, legal opinions on conformity of agreements with the requirements of the legislation of the Republic of Kazakhstan;
  • Legal assistance in regulation of disputes related to above agreements in court and out-of-court procedures.