Procedures for Registering IP Licensing Agreements

The Ministry of Law and Human Rights(“Ministry”)has just issued Regulation No. 8 of 2016 on Procedures for Registering Intellectual-Property Licensing Agreements(“2016 Regulation”).The 2016 Regulation aims to improve protection and legal certainty for both licensees and licensors involved in intellectual-property (“IP”) licensing agreements. This objective is to be achieved by requiring that all IP licensing agreements (be they concerning copyright and related rights, patents, trademarks, industrial design, integrated-circuit layout design, or trade secrets) be registered at the Ministry.The 2016 Regulation is of relevance to IP rights and license holders, as well as businesses which are involved in creative industries.Registration of Licensing AgreementsAs general rule, IP rights can be transferred to other parties through licensing agreements. Under this type of agreement, the owner of the IP rights (licensee) may grant permission/authorize another party (licensor) to possess exclusive rights relating to the IP materials for a certain period of time under specific conditions. [1] If a set of IP rights is transferred through a licensing agreement, the licensee, licensor, or IP consultant/proxy of the IP rights holder (together referred to the “Applicant”) must register the licensing agreement with the Ministry via the Directorate General of Intellectual Property (“Directorate General”). [2] This registration process can be conducted either manually or electronically (via the Directorate General’s official website) and is subject to applicable registration fees. [3] In order to register a licensing agreement, the Applicant must enclose/upload the following documents: [4]