Drawing up license agreements in Ukraine
Cost of services
Reviews of our Clients
... our work on joint projects assured us of your high level of professionalism
What we offer
-
Analyze the license agreement;
-
Provide information about the risks and options to mitigate the risks of entering into a license agreement in Ukraine;
-
Introduce amendments to the license agreement;
-
Negotiate with counterparties and accompany the conclusion of the contract.
Required documents
When do you need a license agreement?
A license agreement is required when it is necessary to provide for the granting of proprietary rights to use intellectual property.
Frequent examples of the need to conclude a license agreement include:
- Using music to make a film, commercials, etc;
- Granting a patent for manufacturing products in Ukraine;
- Providing a trademark for opening a coffee shop in another city;
- Using a computer program.
What are the benefits of a license agreement?
The license agreement allows:
- to regulate relations regarding the order and scope of use of intellectual property between the licensor and the licensee;
- to establish effective mechanisms for obtaining payment for the use of intellectual property objects;
- to ensure the interests of the licensor and the licensee regarding the performance of the contract;
- to establish the necessary effective mechanisms of control and liability for breach of obligations assumed by the parties.
In simple words, a license agreement allows the parties to use intellectual property safely and effectively for business needs.
Terms and cost of concluding a license agreement
The creation of a licensing agreement involves the preparation and coordination with the client of the main terms of the agreement:
- the procedure and terms of payment;
- the scope of the rights granted to the licensee;
- the license terms and conditions;
- the liability and the procedure for dispute settlement.
If it is necessary to analyze the agreement of the counterparty - we analyze, make changes, determine the risks and make recommendations. As a standard, the analysis of the agreement takes 1-3 business days after receipt of all necessary documents and information.
Service packages offers
- analysis of the contract, annexes and additional agreements to it
- providing the client with advice on the provisions of the Agreement that do not correspond to the client's interests and the risks they create
- conducting a 1-hour consultation and providing recommendations on concluding a contract taking into account the interests of the Client
- analysis of the contract, annexes and additional agreements to it
- providing the client with advice on the provisions of the Agreement that do not correspond to the client's interests and the risks they create
- verification of the counterparty in available registers
- making amendments to the contract or preparing a protocol of disagreements
- participation in one round of negotiations on amendments
- analysis of the contract, annexes and additional agreements to it
- providing the client with advice on the provisions of the Agreement that do not correspond to the client's interests and the risks they create
- verification of the counterparty in available registers
- making amendments to the contract or preparing a protocol of disagreements
- agreement with the client on the main terms of the contract, risks that must be avoided
- consulting on taxation issues arising in connection with the license agreement
- preparation of the license agreement, annexes and additional agreements to it
- presentation of the contract to the client and introduction of additional provisions to the contract at the client's request
Types of license agreements
A license agreement may be a separate (named agreement) containing license terms and conditions, just as a license may be part of another type of agreement or be a separate document.
The licensing agreement shall provide for:
- type of license (single, exclusive, non-exclusive);
- objects of intellectual property;
- the scope of rights and the manner of their use;
- the period of validity and territory;
- the procedure for the amount and terms of payment.
As for the types of license, they, as mentioned above, can be:
- Single license – when a certain amount of rights to use the object is given to one licensee, while the licensor also has the right to use the object. For example, you grant the right to use your trademark for your counterparty's branding page, while you will not grant the corresponding rights to other counterparties.
- Exclusive license – the licensor grants the right to use the intellectual property object only to one licensee, and does not use it himself. For example, you grant the right to use your copyrights in a certain territory to only one counterparty (exclusivity).
- Non-exclusive license – the licensor grants the right to use the intellectual property to an unlimited number of licensees. For example, installation of software.
Is it necessary to register the license agreement?
License agreements are not subject to mandatory state registration. License agreements are concluded in a simple written form. A license agreement may also be concluded in electronic form, for example, when installing software.
The stages and process of concluding a license agreement in Ukraine
When we enter into the process of concluding a license agreement for our client, we go through the following stages together with him:
1. Harmonization of information and expectations of the client.
At this stage, we discuss with the client the work on the license agreement, identify the client's need and determine the expected outcome, advise on the type of license, the amount of rights to use the intellectual property that will be made available for use and determine other essential conditions for the client.
2. Analysis of the license agreement.
We analyze the contract, make changes and comments that meet the interests of our client.
3. Preparing a draft agreement, based on the client's vision and the counterparty's conditions.
4. Participating in negotiations with contractors. If necessary, we can participate in negotiations with counterparties on changes/amendments to the license agreement.
5. Accompanying the client until the signing of the license agreement, and provide advice to the client on signing the agreement.
Additionally, we can offer our clients professional advice on tax optimization, if needed. Payment terms are stipulated separately.
Why us
We are ready to help you!
Contact us by mail [email protected] or by filling out the form:License fees under the agreement
License fees may be one-time (lump-sum payment) or periodic – royalties under the license agreement. In this case, the amount and procedure of payments are determined by the parties.
In practice, the following payments are most commonly used:
- One-time payment for the use of intellectual property objects;
- Fixed amount for the use of intellectual property objects;
- % of sales of goods/services using the intellectual property objects.
A license agreement often combines some or all of the above types of fees.
The availability of rights and the possibility of a license agreement
The person offering to provide you with intellectual property must have proprietary rights to such items, or at least the authority (permission) to enter into a sublicense agreement. Therefore, you can always ask for documents that will help to identify the person who has proprietary rights to the intellectual property.
Payment of royalties under a license agreement to an individual
If a legal entity receives a license from a natural person, such legal entity is a tax agent and must accrue and pay personal income tax and social security tax for the natural person.
Software License Agreement
Any use of software implies conclusion of a license agreement, which regulates the use of software, the license agreement must contain information about the intellectual property to be used, methods and conditions of use of the software. Also, if you own the property rights to the software, you need to provide liability for breach of the agreement.
The license agreement for the use of software in most cases is concluded in the form of an offer in electronic form and is published on websites or during the installation of software. The development of such an agreement is handled by lawyers, who must provide for the risks for the software owner and developer.
Answers to frequently asked questions
The law does not require mandatory registration of the license agreement
The type of license (single, exclusive, non-exclusive), term and territory, the list of objects of intellectual property rights and the scope of rights and ways of use.
Yes, a license can exist as a separate document.
No. Under the license agreement, the licensee receives the right to use the intellectual property within the limits defined by the agreement/license. The transfer of property rights is carried out under another agreement.
Analysis of the counterparty to the license agreement and verification of information
Before signing a license agreement, we will analyze the activities of your counterparty, the availability of its intellectual property and check the counterparty with the registers. For example, whether the trademark is registered in the registry, whether the licensee has received the appropriate patent. This is very important, since there are unscrupulous licensees, whose patent is no longer valid, or the license provides for payment for the use of a trademark for a period not yet extended.
The scope of property rights and ways of use under the license agreement
We clarify with the client as much as possible the ways of use of intellectual property, and defend to the counterparty the widest range of rights and ways of use of intellectual property.
Settlement of disputes under a license agreement
We are ready to help the parties to settle disputes arising in connection with the use of objects under the license agreement. In case of impossibility to settle the dispute, we will help with judicial support.
Term of the license agreement
Duration of the licensing agreement is determined by the parties themselves. There are no legal restrictions. Here it is important to consider the following:
- the term of the licensing agreement need not be defined less than the term of the license;
- the licensing agreement may be applied during the term of property rights to a particular intellectual property object. That is, if the author of the text of a song died in 1950, then the license for the text of the song may be granted no longer than until the end of 2022.
Termination of the license agreement
The license agreement, as well as other agreements, has general grounds for termination, defined by the civil and economic codes of Ukraine: by agreement, by law or by court decision.
However, we advise to always determine additional grounds for early termination of the license agreement, for example termination of the agreement in case of violation by one of the parties or non-payment of the royalty.
Our team not only knows how to correctly conclude a license agreement, but also how to do it profitably for you. Contact our specialists for professional help!
