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  • Intellectual property framework

    Overview

    Intellectual property is a right protected by the Constitution of the Republic of Angola. The fundamental intellectual property framework in Angola is provided in 2 main acts: the Legal Regime for the Protection of Copyright and Related Rights and the Industrial Property Law.

  • Commercial contract framework

    Overview

    Angolan law lays down a general principle of contractual freedom, which means that parties are mostly free to establish the terms and conditions to be observed by the contracts they enter into (exceptions are made to mandatory rules legally imposed which will depend on the specific contractual relationship) and are entitled to enter into contracts provided for in the law, but also into contracts that are not provided for in the law.

    Angolan law does not establish a unitary act or set of rules applicable to all commercial contracts. Depending on the specific contractual relationship, commercial contracts may be subject to the provisions of the Civil Code, Commercial Code, Copyright and Related Rights Law, and the Industrial Property Law as well as other specific legislation.

    The aforementioned set of rules changes according to the specific contract in question.

  • Copyrights

    Nature of right

    Copyright covers original literary, scientific and artistic intellectual creations, or works. Registration is not required for the acquisition or maintenance of copyright rights; however, there are certain specific copyright-related acts subject to registration in order to be valid.

    In Angola, copyright comprises economic and moral rights.

    In the scope of economic rights, copyright owners have the exclusive right to use, enjoy and dispose of their work, or to authorize the use of the work, wholly or in part, by third parties.

    Moral rights consist in the right to claim authorship of the work, as well as the right to ensure its genuineness and integrity.

    Legal framework

    Copyrights are governed by Law No. 15/14 of July 31, which introduced the Legal Regime for the Protection of Copyright and Related Rights.

    Duration of right

    As general rule, moral copyrights are unlimited in time and, therefore, are inalienable and imprescriptible. With respect to economic copyrights, copyright protection lasts for a term of 70 years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of works in collaboration, copyright expires 70 years after the death of the last surviving author. As per collective works or works originally assigned to a corporate person, copyright expires 70 years from the date of the first licit publication or disclosure, except if the individuals who create it were identified in the version of the work available to the public.

    For an anonymous work, or work that was legally published or disclosed without identifying the respective author, protection is for 70 years after publication or disclosure.

    Please note that, with respect to applied arts and photographic works, economic copyrights protection lasts for a term of 45 years, counted as of January 1 of the first year after the death of the author.

    Economic copyrights related to a broadcaster last up to 35th calendar year after the broadcast.

    Ownership / licenses

    Moral rights are inalienable.

    The copyright owner, as well as their successors or assignees, may authorize the use of the work by third parties or assign economic rights, wholly or partially.

    Granting an authorization to third parties in order for them to divulge, publish, use or explore the work does not imply the transfer of copyright rights.

    Authorization shall only be granted in writing, mandatorily including the parties involved, the title and type of the work, the rights concerned, the duration, place and price conditions.

    Please note that the assigns are only effective against third parties when registered.

    Remedies for infringement

    The copyright owner may request payment of compensation by the agent for damages and losses to repair the damage suffered as a result the infringement, as well as payment of expenses caused by that infringement, which may include legal expenses.

    The amount of the compensation is determined in accordance with the civil liability regime provided for by the Angolan Civil Code, taking into account the amount of material and moral damage suffered by the copyright owner, as well as the profit obtained by the offender.

    When it is proven that the infringing copies affect a right, the Court may order, ensuring that the penalty is proportionate to the seriousness of the offense and taking into account the legitimate interests of third parties, the destruction of those copies and their packaging or their elimination of trade channels by any other reasonable means, without compensation of any kind, in order to avoid any damage to the copyright owner.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Angolan law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Angolan has enacted no specific rules on protection of mask works or topographies. Although Angola is part of the WTO and has approved the TRIPS Agreement, it has not yet implemented any rules on mask works or topographies protection.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, particularly patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patent rights cover new inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    An invention shall be considered new if it does not form part of the state of the art, which comprises everything, inside or outside the country, made available to the public by means of a written or oral description, by use, or in any other way, before the date of filling of the patent application.

    An invention shall be considered involving an inventive step if it is not obvious to a person skilled in the art.

    An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry, including agriculture, fishing and handicraft.

    A national patent confers on its owner the exclusive right to exploit the patented invention in Angolan territory.

    Legal framework

    Patents are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 2 to 14)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19
    • Cooperation Treaty patent (PCT) approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Duration of right

    Patent protection is granted up to a maximum period of 15 years from the date of filling of the patent application.

    Ownership / licenses

    Patents can be transferred in writing, by means of public deed, whether or not for financial reward.

    Patents may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses shall be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

  • Trademarks

    Nature of right

    A trademark is a sign that distinguishes a company's goods or services, from the goods and services provided by other companies. There are 3 types of trademarks, namely:

    • Nominative: when constituted by letter(s) or word(s)
    • Figurative: consisting of figures or images and
    • Mixed: when it includes a combination of figures and words or letters in its constitution.

    The registered trademark confers to the owner, the right to prevent third parties that do not have their consent from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered.

    Legal framework

    Trademarks are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 29 to 40)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Angola is not a party to either the Madrid Agreement or the Madrid Protocol. As such, International Registrations (IRs) cannot be extended to Angola. Angola's accession to the Madrid Agreement and/or the Madrid Protocol is currently the subject of consultation, but the position is unlikely to change for a number of years to come.

    Duration of right

    National trademark registrations remain valid for 10 years starting from the date of filing of the application and may be indefinitely renewed for equal periods.

    Ownership / licenses

    Trademarks can be transferred in writing, wholly or partially, whether or not for financial reward. A transfer of the whole of the undertaking shall include the transfer of the trademark except where there is agreement to the contrary or circumstances clearly dictate otherwise.

    Trademarks may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including trademarks, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

  • Trade secrets

    Nature of right

    Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

    Legal framework

    Trade secrets are addressed in article 73 of the Angolan Industrial Property Law.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

    Not applicable for this jurisdiction.

    Remedies for infringement

    Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).

    Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).

  • Other key IP rights

    Nature of right

    Design

    Industrial design means any new arrangement or set of lines or colors that, for industrial or commercial purposes, can be applied to the ornamentation of a product by any manual, mechanical, chemical, simple or combined process.

    The registered design confers to the owner the right to prevent third parties that do not have their consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

    Industrial designs

    Industrial designs

    Legal framework

    Design

    Designs are governed by Chapter III of the Industrial Property Law (Articles 15 to 28).

    Duration of right

    Design

    Designs registrations remain valid for 5 years starting from the date of filing of the application and may be renewed for 2 consecutive times of 5 years each.

    Ownership / licenses

    Design

    Designs may be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Design

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including designs, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a registered design may be punishable with a fine.

  • Intellectual property in employment context

    Employees

    As a general rule, the copyright over a work made under a labor agreement or in compliance with functional obligations is determined by agreement between the parties. In case no agreement exists, it is presumed that the ownership over the work belongs to the respective intellectual creator. In cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

    The right to patent shall belong to the inventor or their successors in title. Notwithstanding, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the employer.

    Consultants / contractors

    In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

  • Key commercial contract considerations

    Registration of commercial agreements

    There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

    Recognized language of commercial agreements

    There are no general requirements under Angolan law that provide that contracts must be written in Portuguese. However, in certain cases – for instance, contracts with consumers – the Portuguese language is mandatory, and, if the contract is to be used in specific situations – for example, for purposes of evidence in court or used with public authorities – translation to Portuguese is required.

    Country-specific issues for online content

    Electronic contracts are regulated under Presidential Decree No. 202/11 of July 22.

    Enforceability of online/clickwrap/shrinkwrap terms

    Contracts may be concluded electronically, provided that it does not affect its validity or effectiveness due to the use of this medium. Please note that general contractual clauses requiring electronic conclusion of consumer contracts are prohibited.

    The provider shall make available to the recipients, before the conclusion, unambiguous minimum information including (i) the contract conclusion process, (ii) whether or not the contract is stored by the service provider and accessibility by the recipient, (iii) the language or languages in which the contract may be concluded, (iv) the technical means which the provider makes available so that errors of introduction which may be contained in the order form may be identified and corrected, (v) the contractual terms and general clauses of the contract to be concluded, (vi) the codes of conduct subscribed and information on how to consult them electronically  and (vii) the effective technical means which allows the recipient to identify and correct inserted errors.

    Governing law

    The interpretation and enforceability of contracts is a matter of governing law. The choice of law by the parties is accepted as a general principle, except when otherwise provided for by law; please, however, note that, in certain cases, there are rules of mandatory application – for instance, in the scope of contracts concluded with consumers.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    This will depend on the specific warranty. Notwithstanding, the law may provide some restrictions on the enforceability of warranty disclaimers (eg, for reasons of consumer protection).

    Enforceability of exclusions/limitations of liability indemnification

    As general rule, the enforceability of exclusions or limitation of liability is limited under Angolan law. According to civil law, limitation of liability or exclusion of liability concerns the grounds of liability itself and the damages and losses. The law is not absolutely clear when dealing with the matter; therefore, some hold the opinion that the law does not prevent clauses limiting or excluding liability for acts of mere negligence, while others suggest that all clauses of exclusion or limitation are completely null and void.

    Indemnification

    Indemnification clauses in contracts are, in principle, enforceable, but may be subject to restrictions provided for in the law. It is relatively common to stipulate in commercial agreements that the indemnifying party will indemnify and hold harmless the other party against claims of third parties related to the subject matter of the agreement.

    Electronic signatures

    According to Angolan law, a qualified electronic signature is equivalent to an autographic signature in paper documents. An electronic document shall only be deemed to be signed for purposes of evidence where it meets the requirements set by the law on electronic signature and certification.

  • Key contacts
    Murillo Costa Sanches
    Murillo Costa Sanches
    Of Counsel DLA Piper [email protected] T +351 213 583 659 View bio
    Joni Garcia
    Joni Garcia
    Associate DLA Piper ADCA Angola [email protected] T +244 926 612 525

Key commercial contract considerations

Registration of commercial agreements

Angola

There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

Argentina

The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

Australia

There is no requirement to register commercial agreements. However, if security interests over personal property are created pursuant to an agreement, they should be registered under the Personal Properties Securities Act 2009 (Cth). Registration is generally required to perfect the security interest and make it enforceable against 3rd parties. Failure to register will not void the security but may result in the unregistered security interest being defeated by a later-registered security interest or a bona fide purchaser without notice.

Austria

There are no general registration requirements for commercial contracts, except for any transfer of patents and registered rights where the Patent Office must be provided with the transfer agreement in order to register the transfer.

Registration of licenses for patents, utility patents, designs and trademarks is possible and necessary for the license to have erga omnes (absolute) validity, but is not required for the validity of the transfer itself.

Belgium

There are no general registration requirements for commercial contracts. Registration of licenses for patents, designs and trademarks is possible and necessary for the license to have erga omnes (ie, absolute) opposability, but is not required for the validity of the transfer itself.

Brazil

Generally speaking, contracts are valid and effective between the contracting parties regardless of registration.

Contracts need to be registered with the Registry of Deeds or other specific Registries in order to be effective and enforceable against 3rd parties and, if applicable, in case of remittance of royalties from Brazil to abroad.

Canada

There is no general requirement to register contracts. Transfers and licenses for intellectual property such as patents, trademarks, registered copyrights and industrial designs are generally registerable. The details of registration are set out in the applicable legislation. While registration is generally not a requirement to make the transfer or license valid, it would be prudent to consider registering because a subsequent purchaser for value without notice may acquire rights that limit or defeat the prior assignee’s or licensee’s rights if a transfer or license is unregistered.

Chile

Acts performed over industrial property rights, such as assignments, licenses or liens, shall be executed at least in a private document, and recorded before INAPI. Though is not a validity requirement, recording is necessary for publicity purposes.

With regards to copyright, any assignment must be recorded before the DDI within 60 days of executing the agreement. Law 17.336 requires that these agreements must be subscribed through a public instrument, or a private instrument before a Notary Public.

China

Technology transfer agreements shall be approved by or filed with the applicable competent authority, depending on the nature of the technology. Trademark and patent license agreements shall be registered with the China National Intellectual Property Administration. Material contracts of publicly-traded companies may require disclosure.

Colombia

Any agreement that transfers or assigns an industrial property right shall be registered before the competent authority. The transfer of copyrights should only be registered for publicity purposes.

Czech Republic

No general registration requirement.

Registration of licenses for intellectual property (other than copyright and trade secrets, which are not registrable) in the respective register is generally possible and it enables to make the licenses enforceable against 3rd parties by such registration.

Denmark

There is no general registration requirement for commercial contracts.

Agreements regarding transfer of EU trademarks and designs protected by the EU design regulation must be registered.

Finland

There is no registration requirement for commercial contracts. As a general principle, commercial agreements regarding intellectual property do not need to be registered. Some contracts may require registration, such as patent pledge agreements. Registration of licenses for patents, designs and trademarks are possible but not required.

France

There is no general registration requirement for commercial contracts under French law.

Germany

There is no registration requirement.

Hong Kong, SAR

There is no general registration requirement for commercial contracts. Material contracts entered into by listed companies may require disclosure.

Certain commercial transactions affecting rights in registered designs, patents and trademarks, including assignment, mortgage and license, are registerable. Failure to register may render the transactions unenforceable against potential subsequent buyers of the rights without notice.

Hungary

No general registration required.

Registration of licenses for patents, trademarks and designs are possible but not obligatory.

India

The Registration Act 1908 lists contracts for which compulsory registration is required. This generally includes instruments relating to transfer of immovable property, including gifts, leases and other non-testamentary instruments transferring or assigning or extinguishing any right, title or interest, to or in immovable property.

In addition, stamp duty is required to be paid under federal or state Stamp Acts in order to validate or authenticate certain documents, such as intellectual property assignment agreements.

Indonesia

Generally, commercial agreements do not require registration.

Ireland

There is no requirement to register commercial agreements in Ireland.

Israel

There is no general registration requirement under Israeli law in connection with commercial agreements. Nevertheless, some agreements (eg, real estate or security documents) may require filing in order to be perfected or binding vis-à-vis the relevant authorities or 3rd parties. In addition, publicly traded companies may be required to disclose certain material contracts.

Italy

While it is not necessary to register an agreement at the Italian PTO, the registration of some contracts (eg, trademarks and patent licenses) may be advisable, especially for evidentiary purposes in case of a court proceeding.

Japan

There is no general registration requirement for commercial contracts. Material contracts of publicly-traded companies may require limited disclosure.

Patent license or trademark license for statutory exclusivity requires registration to be enforceable. Registration of non-exclusive licenses for trademarks is possible in order to put potential buyers of the trademarks on notice of the license. Such registration is, however, not required.

Registration of copyright licenses is not available in Japan, although transfer or assignment of copyrights can be registered to assert such assigned rights against third parties.

Luxembourg

There are no general registration requirements for commercial contracts. Registration of licenses for patents, designs and trademarks is a legal requirement for the license to become enforceable against 3rd parties and entitles the licensee to have an absolute defense against infringement but is not required for the validity of the license itself.

Mexico

No general registration requirement, but all intellectual property-related agreements shall be registered before the relevant governmental authority to be effective against 3rd parties.

Netherlands

There are no general registration requirements for commercial contracts. Registration of licenses for patents, designs and trademarks is possible and necessary for the license to have 3rd-party effect, but is not required for the validity of the license itself.

New Zealand

There are no general registration requirements for commercial agreements. However, some commercial agreements may require disclosure where they relate to publicly listed companies or the state sector.

Where an agreement creates a security interest over personal property then this should be registered on the Personal Property Securities Register, pursuant to the Personal Property Securities Act 1999.

Nigeria

There are no general registration requirements for commercial contracts. However, the National Office for Technology Acquisition and Promotion (NOTAP) Act provides for the registration of technology transfer agreements. A 2019 decision by the Nigerian Court of Appeal declared that the non-registration of technology transfer agreements does not render such agreements invalid or unenforceable.

Further, registration of licenses for patents and industrial designs (ie, general rights transfer and contractual licenses) are mandated by law. Failure to register the license with the Patent and Designs Registry affects validity.

Under the Trademarks Act, a registered mark that is assigned to a 3rd party, must be registered at the Trademark Registry in the name of the assignee within 6 months from the date of the assignment or any such extended period allowed by the Registrar. An assignee that fails to comply with this provision will not acquire any right under the assignment, unless the direction of the Registrar is obtained.

Norway

There is no general registration requirement for commercial contracts. Some contracts may, however, require registration to be enforceable towards third parties, such as patent pledge agreements.

Registration of licenses for patents, designs and trademarks is possible to put potential buyers of the patents, designs and trademarks on notice of the license. Such registration is not required.

Peru

N/A

 

Philippines

There is no general registration requirement, though some government contracts may require filing. Material contracts of publicly traded companies may require disclosure.

Registration of licenses for patents, registered copyrights and trademarks is possible to put potential buyers of the patents, registered copyrights and trademarks on notice of the license. Under the IPC, technology transfer arrangements (TTA) may be registered with the Documentation, Information and Technology Transfer Bureau of the Intellectual Property Office of the Philippines (IPO-DITTB). TTAs that do not conform to the mandatory and prohibited clauses for voluntary licensing under the IPC are automatically rendered as unenforceable unless said TTA is registered with the IPO-DITTB.

Certain contracts are required to appear in public documents or acknowledged before a notary public or authorized officer for greater efficacy or to bind third parties, but such requirement does not affect the validity of said contracts as between the parties.

Poland

In general, the contracts do not need to be registered. However, certain laws may require that specific contracts be registered in order to cause specific legal consequences.

Portugal

There are no general registration requirements for commercial contracts under Portuguese law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Portuguese Industrial Property Institute (INPI) in order to be effective against 3rd parties.

Romania

Trademark and industrial design licenses and assignments must be registered with the SOIT for opposability purposes.

Russia

There is no general registration requirement with regard to commercial agreements, though certains kind of contracts, such as contracts involving transfer of trademarks and patents, require a prior registration.

Saudi Arabia

There is generally no legal requirement for commercial contracts to be registered (subject to certain exceptions, for example registration of qualifying agency, distribution and franchise agreements with the Ministry of Commerce and Investment).

Singapore

There is no registration requirement for contracts in Singapore.

Slovak Republic

The registration of license agreements related to an object of the industrial rights may be required by a specific regulation. For example, pursuant to the Patent Act, a license agreement shall have legal effects towards 3rd parties from the date of registration by the Industrial Property Office. However, even if the registration has not been conducted, the license agreement should still have legal effect between licensor and licensee.

South Korea

In Korea, either non-exclusive or exclusive licenses may take effect contractually between the parties without registration. However, if the exclusive licensee wishes to create a right that can directly exercise its right to exclude a 3rd party from practicing the licensed patent, registration is necessary. Further, in either case of non-exclusive or exclusive licenses, a registered right of the licensee is honored in the event that the licensed patent is assigned to a 3rd party, but unregistered right of the licensee does not have such an effect.

Registration does not ensure that a licensor's bankruptcy administrator will not decline to perform obligations under a license agreement or revoke a license agreement under applicable law of bankruptcy. However, assuming that the administrator does not decline the license obligations or revoke the license agreement, registration will be beneficial if the licensed patents are transferred to a 3rd-party purchaser in connection with the licensor's bankruptcy. In other words, if the license is registered, the purchaser cannot acquire the patents free of the license.

A 3rd-party purchaser will acquire a patent free of any existing license unless the license is registered. In contrast, if the license is registered, the license is enforceable to a 3rd-party purchaser in the way that the 3rd-party purchaser acquires the patent subject to the pre-existing license.

The above applies to trademarks, utility models, designs and registered copyrights.

Spain

There is no general registration requirement for commercial agreements.

Registration of licenses for patents, registered copyrights and trademarks is possible but not required (only to have effect in front of 3rd parties).

Sweden

There is no general registration requirement for commercial contracts.

As a general principle, commercial agreements regarding intellectual property need not be registered. Some contracts may require registration, such as patent or trademark pledge agreements.

Registration of licenses for patents, designs and trademarks is possible to put potential buyers of the patents, designs and trademarks on notice of the license. Such registration is not required.

Switzerland

There is no general registration requirement for commercial contracts.

Registration of licenses with the Swiss Federal Institute of Intellectual Property is possible for registry rights such as patents, designs and trademarks in order to have a license effective as to 3rd parties.

Taiwan, China

There is no law requiring registration of commercial agreements. However, if a commercial agreement will result in the transfer, pledge or license of any trademark, patent or circuit layout, it shall be recorded with the competent authorities. Failure to register will render such transfer, pledge or license unenforceable against any bona fide third party.

Ukraine

Generally, there are no registration requirements applicable to commercial contracts.

Assignment agreements in relation to registered IP objects (eg, trademarks, inventions, utility models and industrial designs) are subject to obligatory registration with the National Intellectual Property Authority – the State Organization “Ukrainian National Office of Intellectual Property and Innovations”. The rights to these objects are transferred to the assignee from the moment of registration of the assignment agreement.

License agreements for use of registered IP objects (eg, trademarks, inventions, utility models and industrial designs) are subject to voluntary registration with the State Organization "Ukrainian National Office of Intellectual Property and Innovations", which does not affect validity/enforceability of such agreements.

In addition, under Ukrainian law agreements of transfer of title to real estate (eg, sale and purchase agreement, exchange or donation) are subject to mandatory notarization. The acquired title to real estate is subject to mandatory state registration in the State Register of Proprietary Rights to Real Estate as, under Ukrainian law, a title to real estate arises on the date of its state registration.

If the lease term amounts to or exceeds 3 years, the lease agreement is subject to notarization, and the lease title is subject to mandatory state registration.

United Arab Emirates

There is no requirement to register a commercial agreement in the UAE. However, "agency" agreements that are exclusive and concluded with either an Emirati individual or a company which is 100% Emirati can be registered with the Ministry of Economy as a commercial agency under the Agency Law. In this context, "agency" has a broad meaning and will include any contract for the offer, sale or distribution of goods or services (eg, franchise and distribution agreements and trademark licenses).

If an agreement is registered as a commercial agency, the UAE Courts will have exclusive jurisdiction in the event of a dispute and will apply UAE law notwithstanding any choice of law or jurisdiction agreed in the contract (Article 6 Agency Law).

If an agreement is registered, the local agent will be able to benefit from statutory rights which cannot be waived by contract. The most pertinent of these statutory rights are:

  • Their entitlement to territorial exclusivity
  • Their presumptive extra-contractual right to compensation in the event of termination
  • Their entitlement to receive commissions on sales of the products in their designated territory irrespective of whether such sales are made by or through them
  • Their ability to prevent the import of products into the UAE where they are not the consignee

For as long as the agreement is registered, the Agency Law will allow the local agent to:

  • Stop the imports of any products which are the subject of their distribution agreements and where they are not the consignee
  • Prevent the sale of any of these products by third parties to retailers
  • Issue criminal proceedings against the principal, its affiliates and any newly appointed agents in the UAE who are engaged in the activities covered by the registered agency (Article 22 imposes a fine of AED 5,000 (approx. USD 1,360) on any person (this can include the principal) engaged in the activities covered by a registered agency with a party other than the registered agent)
  • Issue civil proceedings against the principal for breach of contract and breach of the Agency Law to:
    • Claim compensation
    • Claim the commissions made by such agents on any sales of the products made in their territories

Where the agreement is registered, unless a principal has a legitimate material reason to terminate or refuse to renew an agreement which has been registered as a commercial agency, it can only be terminated by the mutual agreement of the parties.

The approach of the UAE Courts tends to be to protect an "agent" (understood to mean a distributor, licensee or franchisee, which meets the criteria for registration) at the expense of a non-UAE principal. As such, even where agreements are not registered, there is a risk that the UAE Courts will award compensation to the "agent" on termination. When drafting an agreement with a UAE entity, steps should be taken to avoid the risk of being treated as a registered agreement and of the UAE Court accepting jurisdiction.

United Kingdom

There are no general registration requirements for commercial agreements, save for certain real estate and finance documents.

There is a distinction in English law between 2 main forms of contract – those executed under hand (ie, simple contracts) and those executed as a deed. A contract made under a deed requires additional formalities to be satisfied but does not require consideration to pass between the parties in order to be binding. Simple contracts must include consideration to be valid.

Documents governed by Scots law are not executed by way of a deed. Statute sets out formalities which can be followed in order to ensure documents are self-proving.

Some commercial agreements may need to be disclosed in certain circumstances, for example, in relation to public companies and contracts with public sector authorities.

United States

There is no general registration requirement, though some government contracts may require filing. Material contracts of publicly traded companies may require disclosure.

It is possible to register licenses for patents, registered copyrights and trademarks to put potential buyers of the patents, registered copyrights and trademarks on notice of the license, but such registration is not required.