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| Intellectual Property
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Effective Licensing
October 28, 2015 |
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| Effective Licensing |
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The owners of patents or trademarks have to comply with the obligations that such rights imply, and which are established in the Mexican Intellectual Property Law (“IP Law”) and it’s Regulation, as well as in accordance with the international treaties which deal with the use and exploitation of patents and trademarks.
Quite often trademark owners believe that they must not pay attention to their trademarks for the following ten years after completing registration, when the renewal date is due. Nevertheless, this idea is quite unfortunate due to the fact that the responsibility of the owner of a trademark begins precisely with the registration.
In this sense, if the ownership of the trademark or the tittle of the patent was requested in representation of another person or by a company (as a result of non-specialized recommendation), it is important to analyse if the owner / holder is the person who effectively uses the patent or the trademark.
In case these rights have not been properly used by its owner or holder, or these rights remain idle (non-commercially used) this might cause, by third parties which demonstrate legal interests in the trademark or patent, the loss of rights (due to the non-adequate use in commerce) or the obligation to execute obligatoires licensing agreements. This loss of rights is possible under the IP Law by the procedures known as “request of invalidity” and “request of expiration”.
In order to protect the trademarks and patents of the company (that sometimes are the most valuable assets of a company) there are several acts that should be done to reduce this risk, especially considering that once a suit of this kind is filed by a third party is difficult to obtain the evidence to demonstrate the proper use of the patent and/or the trademark.
Therefore, it is quite important to have proper licensing schemes through the execution in writing and registration (before IMPI) of these agreements. A proper licensing agreement could avoid the expiration of the property rights of trademarks and patents.
Due to the above, Ramos, Ripoll & Schuster® has developed a Due Licencing Program (“DLP”). Our DLP consists in the following steps:
Step 1. DUE DILIGENCE. Through the examination of the property rights used by the Company, we elaborate a due diligence report including the actual status of each one of those rights.
Step 2. JOINT ANALYSIS. In collaboration with the financial experts of the company and / or the accounting experts of the company, we analyse the convenience of stablishing royalties, and we define its amount and duration.
Additionally, we analyse the convenience of stablishing exclusivity on the use of the patent or trademark, such as the convenience of permit to the licensee the opportunity to legally defend the tittle.
Step 3. CONTRACT DRAFTING. Considering the previous steps, we define the current situation of each intellectual property right, and the necessities of the company. Then our Intellectual Property Team drafts the licensing contracts and completes the registration process before IMPI.
Step 4. FOLLOW UP. Our Intellectual Property Team makes revisions of the execution, renewal, use and actualization of the licensing contracts after its registration periodically. It is important to take into account to submit evidence of this use before IMPI at least every three years.
With our DLP, and once the company had established the IP Law controls, the company is able to prove the correct use of its titles of Intellectual Property and avoid any possible risk of expiration.
For additional information in this regard, please contact any of the members of our Intellectual Property Law Practice Team.
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| J. Rafael Amador Espinosa |
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IMPORTANT: The information here contained is of general nature and for informative purposes only. Please consider that what is here stated does not apply circumstances of any individual or entity. We strongly recommend not performing any activity based on this information without the professional assistance of our lawyers considering your particular circumstances. |
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Our Propiedad Intelectual Practice Team can gladly support you in the following topics:
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Invention and Trademark protection
Franchising Agreements
Trade Secret protection
Intellectual Property Due Diligence
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Copyright protection
Appellation of Origin advice
Drafting and negotiation of Intellectual Property Law Agreements
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