Under a licensing agreement, the right holder (licenser) grants the other party (licensee) the right to use the IP object.
The current legislation of the Republic of Kazakhstan establishes the following types of licenses for IP objects:
- in case of a non-exclusive license, the licenser grants the licensee the right to use intellectual property object and retains the rights to use and to issue licenses to third parties;
- under an exclusive license, the licenser grants the licensee the right to use intellectual property object, without the right to issue a license to third parties and without the right to use a trademark by the right holder.
- under other conditions of use of intellectual property object that do not contradict with the legislation of the Republic of Kazakhstan.
The licensee is entitled to enter inti a sub-license agreement only in cases provided for in the license agreement.
With respect to IP objects (inventions, trademarks and etc.) that are subject to registration for emergence of rights, it is necessary to register licensing agreements with the National Institute of Intellectual Property. Failure to comply with the requirements for registration of agreements may result in their invalidity.
For some IP objects, the legislation provides special requirements related to license agreements. For example, a license agreement for the use of a trademark should contain an indication that the quality of the licensee’s goods shall not be lower than the quality of the licenser’s goods and that the licenser has the right to monitor compliance with this condition.
In addition, there are some restrictions related to right of assignment, for example, the transfer of the right to a trademark is not allowed if it may cause misleading with respect to the product or its producer.
We offer following services:
- Preparation of draft agreements on the transfer of rights and license agreements;
- Preparation, filing and maintenance of an application to register agreement related to use of industrial property objects;
- Legal advice on the transferred rights to IP objects under the agreement;
- Preparation of memorandums, legal opinions on the compliance of agreements with the legislation of the Republic of Kazakhstan;
Assistance in the resolution of disputes under the assignment and licensing agreements in courts and pre-trial settlements.
In this section, information concerning the section Licensing agreement is published.
- Kazakhstan: Some issues of payments for the right to use intellectual property (in co-authorship with T. Akhmetov from Roedl & Partner);
- Assignment of rights under licensing agreements in Kazakhstan;
- Some issues concerning legislation related to licensing agreements in Kazakhstan;
- Assignment of rights under franchising agreements in Kazakhstan;
- Fundamentals of Intellectual Property Protection in Kazakhstan
- How to obtain the right to use a trademark under a license?
- Some issues concerning legislation related to licensing agreements in Kazakhstan
- Going to invest in Kazakhstan? 10 important rules to protect your IP.
- Legal Alert: Recent changes in IP legislation in Kazakhstan
- Intellectual Property in Kazakhstan