Commercialisation of Intellectual Property

Commercialisation of Intellectual Property

First of all, please note that intellectual property may be owned either by a legal entity,  an individual entrepreneur, or an individual.

The intellectual property of a legal entity or an individual entrepreneur can be in the form of a corporate name, trademark, know-how or patent for any design. The intellectual property of individuals can be represented in the form of a literary work, project documents, musical composition, etc. Often in this case, neither the legal entity nor the entrepreneur and the individual are even aware of the existence of intellectual property.

Have you ever thought about the fact that any IP object can bring you income as well as, in the case of a professional approach to this issue, bring stable profits for your company or you? In addition, you can buy an existing business of your favourite brands and also receive income therefrom. This proposal will help you to choose one of the ways in which to gain profit from your intellectual property, which is a compensable transfer of IP rights, i.e. the transfer of rights for a fee.

There are four ways to transfer IP rights:

1. Licence Agreement
2. Contract of Assignment
3. Franchising Agreement
4. Copyright Agreement

1. A licence agreement provides for the transfer of IP rights to a third person for temporary use. In this case, a licensee is granted an exclusive or non-exclusive licence to use intellectual property.

Situation: You are going to expand the boundaries of your business.

Solution: For this purpose, you sign a licence agreement with Company X, which provides that this company obtains the right to use your intellectual property. This right, for example, may mean the right to sell or produce products under your trademark.

Result: You receive income from the right to use your intellectual property at such intervals, which is best for your situation.

2. A contract of assignment provides for the complete transfer of IP rights. At the same time, after signing the contract, you will not have any rights to the transferred IP object. In fact, in this case, there is a sale of IP rights.

Situation: You are leaving the country and have decided to sell your corporate name, which you do not intend to use anymore in Kazakhstan.

Solution: You sign a contract of assignment of IP rights with Company X and thus lose the rights to all possible use of the IP in Kazakhstan.

Result: You will receive appropriate remuneration for the assignment of the IP rights.

3. Under a franchising agreement, the receiving party receives a comprehensive business licence, which includes not only the IP rights, but also the entire structure of the franchiser’s business.

Situation: You want to sell qualitative products under the promoted brand of Company X and at the same time, adopt the goodwill of the company (company’s reputation) and know-how in organising and conducting such business.

Solution: You sign a franchising agreement with Company X, and, depending on the conditions of the agreement, Company X may find you a room, teach you to use its equipment and may even provide you with its customers.

Result: You buy the established business and intellectual property of Company X and receive the income therefrom.

4. Under a copyright agreement, a copyright holder may transfer the copyrights for temporary use to a third party (legal entity or individual) and also get the relevant remuneration.

Situation: You are a software developer and want to get a profit from the software.

Solution: You sign an agreement for the transfer of copyrights to the software.

Result: You receive income from the right to use your intellectual property.

Our services:

• verification of the compliance of the agreement with Kazakhstani legislation;
• preparation of the agreement;
• registration of the agreement with an authorised body.

Recent Experience:

Drafting and registration of licence agreements and amendments thereto for a foreign company producing household chemicals, cosmetics and hygiene products, for a national company producing alcoholic and soft drinks, for pharmaceutical companies, for a foreign company producing sportswear, for large national companies that are food manufacturers, for a foreign investment company, for a foreign manufacturer of household appliances, for a foreign catering company, for a national company producing alcoholic beverages, and for a national company that produces locking and sealing devices.

Verification of the compliance of licenses, franchising agreements, and agreements for the transfer of rights to software with the legislation on intellectual property for a foreign company producing sportswear, for international IT companies, for foreign companies producing medical equipment, for a foreign company producing parking equipment, for a foreign bank, for a foreign producer of alcoholic beverages, for construction companies, and for a clothing company.

Drafting and registration of foreign sub-licence agreements for a foreign cookware producer.

Drafting and registration of contracts of assignment for a national seller of mobile phone payment cards, and for a national producer of locking and sealing devices.

Legal opinions:

• for the supply of licensed software for a mobile operator under a supply agreement;
• for franchising in the hotel business for clients of a foreign law firm;
• a legal opinion for a foreign household appliances producer, as well as for a foreign company which is the global seller of consumer goods, on the requirement to register license/sub-licence agreements.

Publications:

• Commercialisation of Intellectual Property