Assignment of Intellectual Property Rights in UAE
Intellectual Property Rights (IPR) are those exclusive rights which are given to an individual over the creation of his/her mind. It includes copyrights, trademarks, trade secrets, and patents. Just like other physical assets or properties, the intellectual Property rights can also be transferred. There are 2 common ways in which an IPR can be transferred: Licencing or Legal Agreement.
Under Licensing, the real owner of the IP empowers another person to use that property for a limited period in consideration of a fee. The person to whom the IP is transferred is known as Licensee.
The IP holder can grant an exclusive or non-exclusive license, depending upon the number of parties involved in using property. The classification of product, the extent of permission, and the period of license shall be clearly demarcated while transferring the IP through licensing.
Through Declaration or Binding Legal Assignment
The declaration of assigning Intellectual property Rights involves a legal contract between the IP holder and another party (Individual, cooperation, etc.). In some cases, this assignment can be permanent in nature. It means the IP holder will relinquish all his rights and he will not be able to bring any suit/claim regarding that property.
In the UAE, there is no standard format of an assignment agreement. It can be drafted as per the needs and business requirements of the parties. Generally it includes a definition clause (the definition of the IPR and other important terms of the agreement), moral rights, indemnity, waiver and a warranty clause. The most important clauses of such agreements are-
- Assignment Provision – Under this provision, the intellectual property rights are transferred from one party to another. This provision should be drafted broadly so that all sorts of IPs can be covered in this category.
- Disclosure Provision- Under this provision, the parties shall disclose all the material information related to the contract to avoid any future trouble.
- Power of Attorney – This is a standard provision which guarantees that a party can register the ownership rights of an Intellectual property without the presence of the other party, or in a situation when the other party is not willing to do so.
- Dispute Resolution Clause
The contract must include a dispute resolution mechanism which specifies the mode or the manner in which the disputes between the parties are settled. Nowadays, arbitration has become a widely used method to resolve disputes amicably.
These assignment agreements are generally drafted when a company is acquired or amalgamated with another business entity. For making it legally enforceable, it is essential to get the signature of both the parties and 2 witnesses. Further, it should be notarized from a public notary in Dubai.
The assignment of Intellectual Property involves deep consultation and deliberation in order to protect the interest of both the parties. It is highly advisable to contact a lawyer and draft the assignment agreement accordingly.