IP in Business Transactions: Country Q&A tool

Resource type: Articles: know-how

Status: Law stated as at 01-Mar-2011

Jurisdictions: Austria, Belgium, Canada, France, Germany, Greece, Hong Kong, International, Ireland, Italy, Japan, Mexico, Norway, Portugal, Russian Federation, South Korea, Switzerland, USA, United Arab Emirates, United Kingdom, Vietnam

This tool enables subscribers to search the Country Q&A in the IP in Business Transactions Handbook by question and jurisdiction. Simply select the questions and the jurisdictions that you are interested in and click the "submit" button.

To view the Main IPRs Country Q&A tool, please click here.

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Overview of main IPRs

1. Please give a brief overview of the main IPRs in your jurisdiction, including how they are protected (whether through registration or otherwise). Consider:

  • Patents.

  • Trade marks.

  • Copyright.

  • Design rights.

  • Confidential information.

  • Any other main IPRs that apply in your jurisdiction.

 
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Maintaining IPRs

2. What facilities are available to conduct IP searches and obtain IP information on registered IP rights, for example to search:

  • Before an application to register an IPR.

  • After registration to maintain IPRs and monitor possible infringement?

 
3. What steps must a business take to maintain the registration and status of its main IPRs (for example, registration renewal, using an IPR in a certain time period, and avoiding misuse of the IPR)?
 
4. What steps can a business take to avoid committing an infringement of a main IPR and to monitor whether a competitor is infringing its IPRs?
 
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Exploiting IPRs

5. What are the main steps in an IP audit in your jurisdiction to determine the content of an IP portfolio?
 
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Assignment

6. How can main IPRs be assigned (for example, in whole or part, with or without goodwill (in the case of trade marks), in relation to future rights, and with jurisdictional restrictions)?
 
7. What formalities are required to assign each of the main IPRs (for example, in writing, signed by both parties and registration)?
 
8. What main terms should be included in an assignment of IPRs?
 
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Licensing

9. How can each of the main IPRs be licensed (for example, in whole or part, with or without goodwill (in the case of trade marks), and with jurisdictional restrictions)?
 
10. What are the formalities to license each of the main IPRs (for example, is registration required)?
 
11. What main terms should be included in an IP licence?
 
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Taking security

12. Is security commonly taken over IPRs? If yes, which types of IPRs are commonly secured? What problem areas commonly arise (for example, problems valuing the secured IPR assets, or when enforcing the security)?
 
13. What are the main security interests taken over IPRs? How are they created (for example, in writing) and how are they perfected (that is, made enforceable against third parties, for example by registration)? Consider:

  • Patents.

  • Trade marks.

  • Copyright.

  • Design rights.

 
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M&A

14. What IP-related due diligence is commonly carried out in:

  • A share sale?

  • An asset sale?

 
15. What IP-related warranties and/or indemnities are commonly given by the seller to the buyer in:

  • A share sale?

  • An asset sale?

 
16. How are the main IPRs transferred in:

  • A share sale?

  • An asset sale?

 
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Joint ventures

17. Is it common for companies to set up joint ventures in your jurisdiction to develop projects that heavily involve IPRs? If yes, please briefly outline the main IP-related provisions that should be included in the joint venture agreement.
 
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Competition law

18. Please briefly outline the main provisions of your national competition law that can affect the exploitation of the main IPRs.
 
19. Please give brief practical examples of national competition law issues that can arise in the exploitation of the main IPRs (such as problematic licence terms) and briefly outline any possible solutions to manage them.
 
20. What exclusions or exemptions are available for national competition law issues involving the exploitation of the main IPRs (for example, are parallel exemptions available)?
 
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Advertising

21. Please briefly outline the extent to which advertising laws impact on the use of third party trade marks.
 
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Employees and consultants

22. Who owns each of the main IPRs created by an employee in the course of his employment? Is compensation payable in relation to employee IPRs? What main steps can an employer take to ensure it owns each of the main IPRs (for example, by including an assignment of IPRs clause in the employment contract)?
 
23. Who owns each of the main IPRs created by an external consultant? What main steps can a business take to ensure it owns each of the main IPRs (for example, by negotiating an assignment of IPRs)?
 
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Tax

24. What are the main taxes payable by a licensor on the licensing of the main IPRs (for example, withholding tax on royalty payments)?
 
25. What are the main taxes payable by a seller on the disposal of the main IPRs?
 
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Cross-border issues

26. What international IP treaties is your jurisdiction party to?
 
27. Are foreign IPRs recognised in your jurisdiction? Please briefly outline any relevant recognition or registration procedure for each of the main IPRs.
 
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Reform

28. Please briefly summarise any proposals for reform and state if they are likely to come into force and, if so, when.
 
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  • Resource ID: 7-501-7488
  • Law stated date: 01-Mar-2011
  • Products:  IP in Business Transactions, PLC Corporate Law, PLC Cross-border, PLC IPIT & Communications, PLC Law Department, PLC US Intellectual Property & Technology, PLC US Law Department
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