Maksym Koval, Esq.
As of 2024, the legal framework governing the transfer and licensing of intellectual property rights in Ukraine, including patents, industrial designs and trademarks, remains relatively unchanged. As before, these rights are still transferred or licensed through formal agreements, which allows businesses to protect and commercialize their IP assets.
1.IP Transfer Options
The following options for transferring IP are applicable in Ukraine:
• Assignment: this involves permanent transfer of ownership rights. Once an IP right is assigned, the original owner relinquishes all ownership rights to and control over IP;
• License: a license grants permission to the licensee to use IP rights without transferring ownership rights. Licenses can be either (a) exclusive, where the licensee is the only party allowed to use IP or (b) non-exclusive, where the IP can be used by multiple licensees; and,
• Mergers and Acquisitions (M&A): in the context of M&A transactions, IP assets are transferred as part of a framework transaction. IP transfers are often integral to the merging or acquiring company’s strategy to consolidate and enhance its market position.
2.Requisite Documents
The necessary documents for each of the options listed above include the following:
a.Assignment Agreement
An Assignment Agreement must be signed by both the assignor (the current owner) and the assignee (the new owner), formalizing the transfer of ownership rights. The transfer of IP ownership through an assignment requires specific submissions to the NIPA. Once the requisite state fee is paid, the assignment transaction can be officially published for recognition in Ukraine.
Notably, the required documents do not need to be notarized or otherwise legalized if they are signed by authorized legal representatives. In case of sub-delegation of IP rights, all documents must be duly legalized, certified by Apostille or notarized. In any case, registration of an assignment agreement is mandatory in Ukraine.
b.License Agreement
A license agreement contains specific terms and conditions for use of IP. A well-draftedagreement is vital when the transfer involves granting permission to use IP without outright transferring ownership rights. In contrast to assignments, the registration of a license agreement is optional under Ukrainian law, but it can be concluded at the request of either the licensor or the licensee.
The underlying documents do not need to be notarized or legalized if they are signed by a duly authorized legal representative, but in cases of sub-delegation the documents must be duly legalized (apostilled) or notarized. However, we strongly recommend to register IP licenses for legal clarity, because if a license agreement is not registered, it may not be recognized as valid by third parties.
c.Additional Documents
In Ukraine, translation of all documents into the state-recognized language is mandatory, regardless of origin of the documents and agreement of the parties, including:
• Power of Attorney: individuals and legal entities must exercise their rights through an intellectual property representative (patent or trademark attorney) duly registered in Ukraine. This document grants the representative or attorney-in-fact the legal authority to act on the behalf of the client in order to complete the transfer process;
• Supporting Documents: including proof of ownership, current IP status and any encumbrances such as existing licenses or legal disputes, must be filed with registration or recognition documents, especially if requested by NIPO.
In conclusion, the legal framework for the transfer and licensing of intellectual property rights in Ukraine remains quite stable and largely unchanged. Businesses can effectively protect and commercialize their IP assets through assignment, licensing or as components of M&A transactions. Proper documentation and, where necessary, registrations are essential to ensure legal recognition and protection.
