ASSIGNMENT OF INDUSTRIAL PROPERTY RIGHTS (IPR)

1. GENERAL PROVISIONS ON ASSIGNMENT OF IPR
  1. Assignment of an industrial property right means the transfer of ownership right by the industrial property owner to another organization or individual.
  2. The assignment of an industrial property right shall be conducted in the form of written contract (hereinafter referred to as contract for assignment of industrial property right).

2. RESTRICTIONS TO ASSIGNMENT OF IPR
  1. An industrial property right owner shall only assign his or her right within the scope of protection.
  2. The rights to a geographical indication shall not be assigned.
  3. The rights to a trade name shall only be assigned together with the transfer of the entire business premise and business activities under the trade name.
  4. The assignment of the rights to a mark shall not cause confusion as to characteristics or origin of the goods or services having the mark.
  5. The rights to a mark shall only be assigned to the organizations or individuals who fulfill requirements for the person having the right to registration in respect of that mark.
3. CONTENTS OF CONTRACTS FOR ASSIGNMENT OF IPR
A contract for assignment of industrial property right shall have the following substantial provisions:
  1. Full name and address of the assignor and the assignee;
  2. Bases of assignment;
  3. Price for assignment;
  4. Rights and obligations of the assignor and the assignee.

4. GENERAL PROVISIONS ON LICENSING OF IP OBJECTS
  1. Licensing of an industrial property object means the permission of the industrial property owner given to another organization or individual to use the industrial property object within the scope of the owner’s use right.
  2. The licensing of an industrial property object shall be conducted in the form of written contract (hereinafter referred to as license contract for use of industrial property object).
5. RESTRICTIONS TO LICENSING OF IP OBJECTS
  1. The right to use a geographical indication or a trade name shall not be licensed.
  2.  The right to use of a collective mark shall not be licensed to organizations or individuals other than members of the collective mark owner.
  3. The licensee shall not enter into a sub-license contract with a third party without permission of the licensor.
  4. A mark licensee shall have the obligation to indicate on goods and packaging thereof that the goods have been produced under a contract for use of mark.
  5. An invention licensee under an exclusive contract shall have the obligation to use such invention in the same manner as the invention owner in accordance with Article 136.1 of IP Law.
6. TYPES OF CONTRACTS FOR USE OF IP OBJECTS
License contracts for use of industrial property object may be of the following types:
  1. Exclusive license contract means a contract under which, within scope and term of license, the licensee has an exclusive right to use the industrial property object while the licensor can neither conclude any license contracts for use of industrial property object with any third party nor, without permission of the licensee, use the industrial property object;
  2. Non-exclusive license contract means a contract under which, within scope and term of licensing, the licensor still has the rights both to use the industrial property object and also to conclude non-exclusive contracts with others.
  3. Sub-license contract for use of an industrial property object means a contract the licensor of which is a licensee of the industrial property object under another contract.
7. CONTENTS OF LICENSE CONTRACTS FOR USE OF IP OBJECTS
1. A license contract for use of industrial property object shall have the following substantial provisions:
a)  Full name and address of the licensor and the licensee;
b)  Bases of the license;
c)  Type of the contract;
d)  Scope of the license (limitations to use; territorial limitations);
đ)  Term of license;
e) Price for the license;
g) Rights and obligations of the licensor and the licensee.
2. A license contract for use of industrial property object shall not have such provisions that unreasonably restricts the right of the licensee, particularly those provisions not deriving from the rights of the licensor as follows:
a)  Prohibiting the licensee to improve the industrial property object other than marks; compelling the licensee to grant a free license or to assign to the licensor the right to industrial property registration or an industrial property right in respect of such improvements;
b)  Directly or indirectly restricting the licensee to export goods produced or services supplied under the license contract for use of industrial property object to the territories where the licensor neither hold the respective industrial property right nor has the exclusive right to import such goods;
c)  Compelling the licensee to buy all or a given percentage of materials, components or equipment from the licensor or the persons designated by the licensor without aiming at ensuring the quality of goods produced or services supplied under the licensee;
d) Prohibiting the licensee from contesting validity of the industrial property right or the right to license.
3.  Any terms in the contract as referred to in the cases of clause 2 of this Article shall be invalid ex-officio.

8. VALIDITY OF CONTRACTS FOR TRANSFER OF IPR
1.  For the industrial property rights established on the basis of registration as referred to in Article 6.3(a) of this Law, a contract for assignment of industrial property right shall only be effective upon registration with the state administration authority of industrial property rights.
2.  For the industrial property rights established on the basis of registration as referred to in Article 6.3(a) of this Law, a contract for use of industrial property object shall be effective as agreed by the parties but shall only be effective to a third party upon registration with the state administration authority of industrial property rights.
3.  Validity of a licensing contract for use of industrial property object shall be terminated ex-officio upon the termination of licensor’s industrial property right.

9. DOCUMENTS FOR REGISTRATION OF CONTRACTS FOR TRANSFER OF IPR
A dossier for registration of a licensing contract for use of industrial property object or a contract for assignment of industrial property right shall comprise the following:
1. A request for registration of contract, made in prescribed form;
2. An original or a valid copy of the contract;
3. The original of the Protection Title (in case of assignment of industrial property right);
4. Co-owners’ written consent and a written explanation of the reason for disagreement of the rest co-owners if the industrial property right is under co-ownership;
5. Receipt of fees and charges;
6. Power of attorney, if the dossier is filed through a representative.

10. PROCESSING DOSSIERS FOR REGISTRATION CONTRACTS FOR TRANSFER OF IPR
The order and procedures of receiving and processing dossiers for registration of contracts for transfer of industrial property rights shall be provided for by the Government.