WHAT ARE THEY?
A licence is an official document which gives someone permission to do, use, or own something. In the area of Intellectual Property the owners of Trademarks, Patents, Software, Industrial Designs and Copyright can License the use or exploration of this intangible property to others. Licensing is generally understood as an agreement under which the owner of an intellectual property right (IPR) grants authorisation to its use without an effective transfer of ownership. Licences are granted for a determined period of time and within a determined territory, on a remunerated or free-of-charge basis.
Normative Act 135/97 outlines the PTO’s role in the recordal of Licensing Contracts:
- The PTO will record Contracts which imply in transfer of technolgy or:
- Licensing of Rights ( Exploration of Patents or Licensing Use of Trademarks)
- Aquisition of Technological Knowledge (Provision of Technology and rending services of Technical and Scientific Assistance)
- Franching Contracts
The PTO does not record Licenses for the use of Software; Software Maintenance Services; Software Distribution; Copyright Licenses; Marketing Services; Environmental Licenses and Trade Secrets among many othe types of Licence.
The main reasons that the PTO is involved in the recordal of certain Licenses is because:
- It enables the remmitance of royalties to licensing companies located abroad;
- To produce effects in relation to third parties (such as infingers of the IP);
- For a licensee paying royalties abroad to a foreign company to claim tax deductions related to the royalty payments;
- It is ‘prima facie’ evidence of complying with the rules governing unfair competition;
- If provided for within the agreement the licensee may be vested with rights to take action against infringer’s of the IP right;
- The possibility of securing tax incentives for companies participating in Technological and Industrial Development Programs;
- Securing temporary work visas for foreign workers
Our firm is fully qualified to act in the recordal of trademark and patent licenses, transferring technology and franchises, not just in the drafting of the actual licensing contract, but also in the necessary steps to record a license before the PTO.