Regulations on transfer of industrial property rights

1. Transfer of industrial property rights

Transfer of industrial property rights means the transfer of industrial property rights by the owner of industrial property rights to another organization or individual. The transfer of industrial property rights must be made in a written contract (the contract for assignment of industrial property rights).

a. Conditions restricting the transfer of industrial property rights

Owners of industrial property rights may only transfer their rights within the scope of protection.

Rights to geographical indications are non-transferable.

The right to a trade name can only be transferred together with the transfer of the entire business establishment and business activities under that trade name.

The assignment of rights to a mark must not cause confusion about the characteristics and origin of goods or services bearing the mark.

The right to a mark may only be transferred to an organization or individual that meets the conditions for the person having the right to register that mark.

b. Industrial property right transfer contract

• An industrial property right assignment contract is a contract for the licensing of an industrial property object (which can be an invention, industrial design, trademark, or layout design of a semiconductor integrated circuit), is an organization or individual holding the exclusive right to use an industrial property object (the licensor - often referred to as the assignor) allowing another organization or individual (the licensee to use – commonly referred to as the Receiver) using the industrial property object.

• An industrial property right transfer contract may be:

  • Exclusive contract.

  • Non-exclusive contract.

  • Contract for the use of secondary industrial property object.

• Contents of industrial property right transfer contract.

An industrial property right transfer contract must contain the following principal contents:

• Full name and address of the assignor and assignee.

• Grounds for transfer.

• Transfer price.

• Rights and obligations of the assignor and assignee.

2. Transfer of the right to use industrial property objects

Transfer of the right to use an industrial property object means that the owner of an industrial property object permits another organization or individual to use an industrial property object within the scope of his/her use right. The transfer of the right to use industrial property objects must be made in a written contract (the contract to use the industrial property object).

a. Conditions for restricting the transfer of the right to use industrial property objects

The right to use geographical indications and trade names is not transferable.

• The right to use a collective mark may not be transferred to an organization or individual that is not a member of the owner of that collective mark.

• The licensee may not enter into a secondary contract with a third party, unless otherwise permitted by the licensor.

• The licensee of the right to use the mark is obliged to write instructions on the goods and packages of goods about the fact that such goods are produced under the contract to use the mark.

• The party that is licensed to use the invention under an exclusive contract is obliged to use the invention as the owner of the invention.

b. Contract for transfer of the right to use industrial property object

• Types of contracts for transferring the right to use industrial property objects:

  • Exclusive contract.

  • Non-exclusive contract.

  • Contracts for using secondary industrial property objects.

• Contents of the contract for the transfer of the right to use industrial property objects:

  • Full name and address of the licensor and the licensee.

  • Grounds for transfer of the right to use.

  • Type of contract.

  • Scope of transfer, including limitation of use right and territory limitation.

  • Contract term.

  • Price for transferring the right to use.

  • Rights and obligations of the licensor and the licensee.

The 2005 Intellectual Property Law provides very detailed regulations on the transfer of industrial property rights. It is very important to comply with the transfer rules and transfer conditions. Organizations and individuals should pay special attention to clearly grasp the above provisions to ensure their best rights and interests.