Licence agreements

What is a licence agreement

A licence agreement is one of the types of contract regulated by the Civil Code. It is the most appropriate type of contract under which the licensor may authorise the licensee to exercise an intellectual property right.

A licence agreement should always contain:

1. Definition of the relevant intellectual property right
2. Expression of the licensor’s will to authorise the licensee to exercise the intellectual property right within the agreed limited or unlimited scope
3. Licensee’s obligation to pay the consideration in the absence of an express agreement not to pay

 In cases where an exclusive licence is granted or where the licence is to be entered in a public register, licence agreements must be concluded in writing. However, we recommend that the licence agreement is concluded in writing regardless of whether it concerns an exclusive or non-exclusive licence.

In the case of an exclusive licence, the licensor may not grant the same licence to any third party for the period of the exclusive licence and will often have to refrain from exercising the right to use the intellectual property in the manner specified in the licence agreement.

Licence agreements can be concluded in relation to, inter alia:

1. Copyright
2. Rights to an invention
3. Rights to a utility model
4. Rights to an industrial design
5. Rights to a trademark
6. Rights to a business name
7. Rights to confidential information, know-how and trade secrets

Sublicence agreement

Under a sublicence agreement, the licensee is entitled to further grant the right to exercise the intellectual property right under the licence agreement to a third party, provided always that the licensee may not transfer to the sublicensee more rights than the licensee has himself.

A sublicence agreement corresponds in form to a licence agreement and the provisions on the licence agreement contained in the Civil Code apply to the sublicence agreement as well. However, the right to exercise an intellectual property right may be sublicenced only if this option has been agreed in the licence agreement. Otherwise, the sublicence agreement may be considered invalid.

The sublicence agreement is considered derivative in relation to the licence agreement, where the termination of the licence agreement automatically results in the termination of the sublicence agreement.

In practice, chaining or branching of sublicences may also occur. However, both options must be agreed upon between the parties to the licence agreement.

We will be happy to help you with all the aspects of licence and sublicence agreements if necessary.

What situations do we typically handle for our clients regarding licence agreements?

• Content of a licence agreement
• Possible subjects of a licence agreement
• Drafting sublicence agreements
• I want to draw up a licence agreement
• Fees under licence agreements
• Drafting a licence agreement
• Disputes arising from breach of licence agreements
• Advice for companies developing software and web creators
• Licence fees
• Use of exclusive and non-exclusive licences