According to item 1 Article 1114 of the Civil Code of Ukraine license agreements are not subject to compulsory registration and they enter into force on the date of execution thereof. Meantime, in case the Licensor or Licensee would like to avoid any risks which may arise with regard to such an agreement, the license agreement may be recorded with the Ukrainian Patent Office. In this case information on the Licensor and Licensee and on the type of license is published in the official bulletin of the Ukrainian Patent Office.
Besides, under the Ukrainian patent legislation a license is not recorded for a pending case and can be registered only upon issuance of the Ukrainian patent.
The documents required for the recordal of a license in respect of one Ukrainian patent are as follows:
1) three originals OR three notarized copies of the License Agreement, which should be signed and stamped by the parties with specifying authorized persons' names and corporate positions (preferably Director/CEO/Manager). Instead of originals or notarized copies it is also possible to provide the Ukrainian Patent Office with three notarized extracts from the License Agreement;
2) one original Power of Attorney from the Licensor OR Licensee, which should be signed and stamped with specifying authorized person's name and corporate position; notarization or legalization is not required, unless it is signed by an authorized signatory.
All the documents filed with the Ukrainian Patent Office should be translated into Ukrainian.
The License Agreement should contain the following data:
- parties to the Agreement (names and addresses);
- subject of the Agreement (patent number and title);
- the scope of rights of the Licensee under the Agreement (production, exploitation, import, offer for sale, sale, etc.);
- type of license;
- term of the Agreement;
- special conditions of the Agreement, including possibility of granting sublicenses;
- territory of the Agreement.
Upon receipt of the aforesaid data we could provide you with our bilingual License Agreement and Power of Attorney forms drafted in accordance with the requirements of the Ukrainian patent legislation.
The procedure of license recordal takes about 2-3 months. As soon as the license is recorded an Official Decision on license and an Extract from the Ukrainian Patent Register are issued.
