It is well known that the transfer of intellectual property rights can be formalized in various ways. A license agreement is the most common way of transferring the rights to use intellectual property objects.

According to Article 1036 of the Civil Code of the Republic of Uzbekistan, under a license agreement, the party having the exclusive rights to the results of intellectual activities or the means of individualization (licensor) grants the other party (licensee) the right to temporarily use the corresponding intellectual property object.

According to Uzbek laws, from the point of view of the scope of the transferred rights to the licensee, license agreements are divided into two types:

Simple non-exclusive license

  1. . This license implies the right to use the intellectual property object and the right to issue a license to other third parties by the licensor. Accordingly, upon the issue of a simple non-exclusive license, the intellectual property object can be used by the licensor, the licensee and, at the same time, by third parties, who have received an exclusive right to use the intellectual property object from the rightsholder.

Exclusive license.

  1. The peculiarity of this type of license is that the licensee has no right to transfer it to any third party after entering into such an agreement. Accordingly, with an exclusive license, the licensor and the licensee can simultaneously use the intellectual property object; however, the licensor does not have the right to enter into a license agreement and transfer the right to use to third parties.

It should be emphasized that before entering into the license agreement, the parties are obliged to register an intellectual property object in the Republic of Uzbekistan by submitting an application to the Agency on Intellectual Property under the Ministry of Justice of the Republic of Uzbekistan (the "Agency") or have an international registration with a coverage area in the Republic of Uzbekistan.

The next important stage is the conclusion of the license agreement.

Requirements for drafting the license agreements

According to Uzbek laws, the license agreement must be concluded in writing and registered with the Agency. The formalization and registration procedure of the license agreement is determined by the "Rules of the registration of agreements on the transfer of rights to an invention, utility model, industrial design, selection achievement, trademark, service mark and license agreements for their use, agreements on the full or partial transfer of rights to the integrated circuit layout, complete or partial assignment of all property rights and transfer of property rights to a program for electronic computers, a database" approved by the Order of the Director of the State Patent Office No.48 dated May 11, 2005 (the "Rules of the registration of license agreements").

Under the Rules for the license agreements registration, license agreements must contain the following conditions:

  • information on the parties to the agreement (details and names of the parties);
  • subject of the agreement (the number of the registration certificate);
  • type of transferred rights;
  • scope of the transferred rights under the agreement (the scope of the use of the intellectual property object by the licensee);
  • territory of the validity of the agreement;
  • amount of remuneration (or a provision confirming the existence of an agreement on remuneration);
  • duration of the agreement.

It should be noted that one of the critical conditions of the license agreement is the obligation of the licensee to ensure the exact conformity of the quality of the goods produced, the services rendered, the work performed to the quality of similar goods, services or work produced, rendered or performed directly by the licensor.

Registration of license agreements

In practice, the registration procedure of license agreements is carried out in 3 stages that include the following:

1. Filing of the documents.  the following documents are filed with the Agency for registration of a license agreement:

  • application for registration of a license agreement;
  • 3 (three) copies of the license agreement in the Uzbek or Russian languages, certified in the established manner;
  • document confirming the legal succession or the right of inheritance (if the author has inherited the work);
  • power of attorney (if the application is submitted through a representative);
  • document confirming the payment by the applicant of the State fee for the consideration of the application.

2. Examination of the documents.  Upon receiving the documents, the Agency checks the availability of all the necessary documents and their compliance with the requirements established by the Rules of the registration of license agreements within 15 (fifteen) days. In case of absence of the necessary documents or violation of the established procedure, the Agency sends the applicant a letter requesting to provide the missing or corrected documents within 3 (three) months from the date of notification.

If the filed documents meet the requirements of the Rules of the registration of license agreements and the license agreement undergoes a corresponding examination, the Agency registers the agreement and includes information on the registration of the license agreement into the State register. Moreover, the Agency sends the applicant 2 (two) copies of the license agreement with a registration number and a certificate with a registration mark.

3. Publication of registration data. Information on the registration of a license agreement is published in the official bulletin of the Agency and on its official website.

Therefore, upon concluding license agreements, it is necessary to pay special attention to the drafting and examination procedure of license agreements to correctly stipulate the parties' positions, rights, and obligations to minimize the risks of disputes between the parties.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.