Transfer intellectual property rights mean permission by the exclusive intellectual property holders (the licensors) for other organizations and individuals (the licensees) to use or exploit one or several rights over such intellectual assets. Intellectual properties include subject matters in the groups of three following intellectual property rights: Copyright, copyright-related rights, industrial property rights, rights to plant varieties and harvested materials. The licensing does not apply to plant varieties and harvested materials.
Regarding the remaining two groups, the right to use intellectual properties may be transfered in two forms as follows:
- Licensing as agreed between the licensor and the licensee;
- Licensing under decisions of state agencies: Only applies to inventions.
03 steps for the transfer of intellectual property rights in Vietnam:
- Firstly, ensuring that the licensor is the entity with the licensing right: This is perhaps an obvious one, but in fact, there are many cases where the parties performing the transaction of licensing the intellectual properties to fail to guarantee this prerequisite.
Among 3 groups of intellectual property rights as mentioned above, only the copyright and related rights are automatically generated, the remaining right groups shall arise only when the owner completes the registration procedure with the state competent agencies, and the transfer of rights shall be carried out only after the licensor is recognized the owner.
Or in case the licensor concurrently is the licensee from the owner, he/she/it must be allowed to sub-license such right to the third party.
- Secondly, determining the scope of licensing and making the licensing contracts:
Regarding the scope, depending on the assessment criteria and purposes, intellectual property right licensing may be divided into the following categories:
+ Monopoly – Non-monopoly;
+ Licensing (directly from the owner to the licensee) – Sub-licensing (the licensee sub-licenses such rights to others).
Regarding the form, the licensing of intellectual properties in 3 groups of intellectual property rights must be made in writing, which is an independent licensing contract or a part of another contract. Any oral agreements, or contents agreed upon in official dispatches or emails, etc. shall be considered invalid.
- Thirdly, registering the licensing contracts (only applicable to subject matters of industrial property rights). It is noted that the registration of the contracts of licensing of industrial property objects is not a compulsory condition for the contract to be effective. However, the registration with the state competent agency (the Intellectual Property Office) is mandatory for the contract to be effective for third parties.
Disclaimer: This article is for general information only and is not a substitute for legal advice. Apolat Legal is a Vietnamese law firm with experience and capacity to advise on matters related to Intellectual Property Rights. Please click here to learn more about our services and contact our lawyers in Vietnam for advice via email email@example.com.