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Getting The Deal Through


Published: February 2020


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  • 1.

    Are there any restrictions on the establishment of a business entity by a foreign licensor or a joint venture involving a foreign licensor and are there any restrictions against a foreign licensor entering into a licence agreement without establishing a subsidiary or branch office? Whether or not any such restrictions exist, is there any filing or regulatory review process required before a foreign licensor can establish a business entity or joint venture in your jurisdiction?

  • 2.

    Forms of licence arrangement
    Identify the different forms of licence arrangements that exist in your jurisdiction.

  • 3.

    Creation of international licensing relationship
    Does legislation directly govern the creation, or otherwise regulate the terms, of an international licensing relationship? Describe any such requirements.

  • 4.

    Pre-contractual disclosure
    What pre-contractual disclosure must a licensor make to prospective licensees?

  • 5.

    Are there any requirements to register a grant of international licensing rights with authorities in your jurisdiction?

  • 6.

    Paris Convention
    Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?

  • 7.

    Contesting validity
    Can the licensee be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction?

  • 8.

    Invalidity or expiry
    What is the effect of the invalidity or expiry of registration of an intellectual property right on a related licence agreement in your jurisdiction? If the licence remains in effect, can royalties continue to be levied? If the licence does not remain in effect, can the licensee freely compete?

  • 9.

    Requirements specific to foreigners
    Is an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners, necessary prior to the registration of intellectual property in your jurisdiction?

  • 10.

    Unregistered rights
    Can unregistered trademarks, or other intellectual property rights that are not registered, be licensed in your jurisdiction?

  • 11.

    Security interests
    Are there particular requirements in your jurisdiction to take a security interest in intellectual property?

  • 12.

    Proceedings against third parties
    Can a foreign owner or licensor of intellectual property institute proceedings against a third party for infringement in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Can an intellectual property licensee in your jurisdiction institute proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor? Can the licensee be contractually prohibited from doing so?

  • 13.

    Can a trademark or service mark licensee in your jurisdiction sub-license use of the mark to a third party? If so, does the right to sub-license exist statutorily or must it be granted contractually? If it exists statutorily, can the licensee validly waive its right to sub-license?

  • 14.

    Jointly owned intellectual property
    If intellectual property in your jurisdiction is jointly owned, is each co-owner free to deal with that intellectual property as it wishes without the consent of the other co-owners? Are co-owners of intellectual property rights able to change this position in a contract?

  • 15.

    First to file
    Is your jurisdiction a ‘first to file’ or ‘first to invent’ jurisdiction? Can a foreign licensor license the use of an invention subject to a patent application but in respect of which the patent has not been issued in your jurisdiction?

  • 16.

    Scope of patent protection
    Can the following be protected by patents in your jurisdiction: software; business processes or methods; living organisms?

  • 17.

    Trade secrets and know-how
    Is there specific legislation in your jurisdiction that governs trade secrets or know-how? If so, is there a legal definition of trade secrets or know-how? In either case, how are trade secrets and know-how treated by the courts?

  • 18.

    Does the law allow a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties in your jurisdiction, both during and after the term of the licence agreement? Is there any distinction to be made with respect to improvements to which the licensee may have contributed?

  • 19.

    What constitutes copyright in your jurisdiction and how can it be protected?

  • 20.

    Perpetual software licences
    Does the law in your jurisdiction recognise the validity of ‘perpetual’ software licences? If not, or if it is not advisable for other reasons, are there other means of addressing concerns relating to ‘perpetual’ licences?

  • 21.

    Legal requirements
    Are there any legal requirements to be complied with prior to granting software licences, including import or export restrictions?

  • 22.

    Restrictions on users
    Are there legal restrictions in your jurisdiction with respect to the restrictions a licensor can put on users of its software in a licence agreement?

  • 23.

    Relevant legislation
    Is there any legislation that governs the nature, amount or manner or frequency of payments of royalties or other fees or costs (including interest on late payments) in an international licensing relationship, or require regulatory approval of the royalty rate or other fees or costs (including interest on late payments) payable by a licensee in your jurisdiction?

  • 24.

    Are there any restrictions on transfer and remittance of currency in your jurisdiction? Are there are any associated regulatory reporting requirements?

  • 25.

    Taxation of foreign licensor
    In what circumstances may a foreign licensor be taxed on its income in your jurisdiction?

  • 26.

    Restrictions on trade
    Are practices that potentially restrict trade prohibited or otherwise regulated in your jurisdiction?

  • 27.

    Legal restrictions
    Are there any legal restrictions in respect of the following provisions in licence agreements: duration, exclusivity, internet sales prohibitions, non-competition restrictions, and grant-back provisions?

  • 28.

    IP-related court rulings
    Have courts in your jurisdiction held that certain uses (or abuses) of intellectual property rights have been anticompetitive?

  • 29.

    Indemnification provisions
    Are indemnification provisions commonly used in your jurisdiction and, if so, are they generally enforceable? Is insurance coverage for the protection of a foreign licensor available in support of an indemnification provision?

  • 30.

    Waivers and limitations
    Can the parties contractually agree to waive or limit certain types of damages? Are disclaimers and limitations of liability generally enforceable? What are the exceptions, if any?

  • 31.

    Right to terminate
    Does the law impose conditions on, or otherwise limit, the right to terminate or not to renew an international licensing relationship; or require the payment of an indemnity or other form of compensation upon termination or non-renewal? More specifically, have courts in your jurisdiction extended to licensing relationships the application of commercial agency laws that contain such rights or remedies or provide such indemnities?

  • 32.

    Impact of termination
    What is the impact of the termination or expiration of a licence agreement on any sub-licence granted by the licensee, in the absence of any contractual provision addressing this issue? Would a contractual provision addressing this issue be enforceable, in either case?

  • 33.

    Impact of licensee bankruptcy
    What is the impact of the bankruptcy of the licensee on the legal relationship with its licensor; and any sub-licence that the licensee may have granted? Can the licensor structure its international licence agreement to terminate it prior to the bankruptcy and remove the licensee’s rights?

  • 34.

    Impact of licensor bankruptcy
    What is the impact of the bankruptcy of the licensor on the legal relationship with its licensee; and any sub-licence the licensee has granted? Are there any steps a licensee can take to protect its interest if the licensor becomes bankrupt?

  • 35.

    Restrictions on governing law
    Are there any restrictions on an international licensing arrangement being governed by the laws of another jurisdiction chosen by the parties?

  • 36.

    Contractual agreement to arbitration
    Can the parties contractually agree to arbitration of their disputes instead of resorting to the courts of your jurisdiction? If so, must the arbitration proceedings be conducted in your jurisdiction or can they be held in another?

  • 37.

    Would a court judgment or arbitral award from another jurisdiction be enforceable in your jurisdiction? Is your jurisdiction party to the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards?

  • 38.

    Injunctive relief
    Is injunctive relief available in your jurisdiction? May it be waived contractually? If so, what conditions must be met for a contractual waiver to be enforceable? May the parties waive their entitlement to claim specific categories of damages in an arbitration clause?

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