National Institute of Intellectual Property
Types of agreements for registering the transfer of the exclusive right to industrial property objects under an assignment/partial assignment agreement or granting the right to use an industrial property object.
1. Contract for the transfer of the exclusive right (assignment)
Under a contract of assignment of exclusive right, one party transfers its exclusive right to an object of industrial property in full or in part to another party
2. License agreement
Under a license agreement, a party that has the exclusive right to the result of intellectual creative activity or to a means of individualization (licensor) grants the other party (licensee) the right to temporarily use the corresponding intellectual property object in a certain way
The license agreement may provide for the licensor to grant the licensee the right to use an object of industrial property:
1) with the licensor retaining the possibility of using it and the right to issue a license to other persons (a simple, non-exclusive license);
2) with the licensor retaining the possibility of using it, but without the right to issue a license to other persons (the only license);
3) without the licensor retaining the possibility of using it and without the right to issue a license to other persons (exclusive license).
3. Open license
The patent holder may submit an application to an expert organization for granting any person the right to use an object of industrial property (an open license).
The patent holder's application for granting the right to an open license is not subject to revocation and remains valid for three years from the date of its registration. Within the specified period, the payment for maintaining the security document in force is reduced by 50 percent from the year following the year of registration in the relevant state register.
Any person who wishes to acquire an open license shall be obliged to conclude a corresponding agreement in writing with the patent holder.
4. Compulsory license
If the patent holder fails to use the industrial property object and refuses to conclude a license agreement on acceptable commercial terms within ninety calendar days from the date of the request, any person shall have the right to apply to the court for a compulsory non-exclusive license if the industrial property object has not been continuously used after the first publication of information on the issuance of a title of protection for the industrial property object during any three years preceding the date of filing of the application. If the patent holder does not prove that the non-use is due to legitimate reasons, the court grants the specified license with the definition of the limits of use, terms, amount and order of payments. The amount of payments must be set at least below the market price of the license, determined in accordance with established practice.
5. Comprehensive business license agreement (franchise)
Under a complex business license agreement, one party (complex licensor) undertakes to grant to another party (complex licensee) for remuneration a complex of exclusive rights (license complex), including, in particular, the right to use the licensor's trade name and protected commercial information, as well as other objects of exclusive rights (trademark, service mark, patent, etc.) stipulated by the agreement, for use in the licensee's business activities.
State service "Registration of agreements on the disposal of exclusive rights":
List of documents and information for the provision of public services:
1) application of an individual and (or) a legal entity for registration of transfer of the exclusive right to industrial property objects under an assignment/partial assignment agreement in electronic form in the forms according to Annexes 2 and 3 to the Rules or granting the right to use an industrial property object under a license agreement, an integrated business license agreement or other agreement including the terms of the license agreement in electronic form in the forms according to Annexes 8, 9 and 10 to the Rules;
2) an electronic copy of the agreement on granting the right to use the object of industrial property or a notarized copy of the agreement;
3) an electronic copy of the decision of the management bodies of the owner of the security document or exclusive rights, the general meeting of founders or shareholders on the issue of concluding the contract and submitting the authority to sign the contract by the head of the enterprise, in case of filing an application by the national service recipient;
4) an electronic copy of the power of attorney in case of filing an application through a representative.
The term of rendering the state service: within 10 (ten) working days.
The procedure for the provision of public services at the link: https://adilet.zan.kz/rus/docs/V1800017329
Samples of recommended application forms and contracts
Application link https://newcab.kazpatent.kz/
