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Patent licenses

The owner of a patent may transfer to third parties, on the conditions agreed upon on each occasion, the total or partial ownership of the patent. The assignment of a patent must be notarized and registered at the Records Office: A patent may not be obtained merely for blocking purposes, it must be worked. If it is not worked, then after a given period and if the appropriate conditions are fulfilled, third parties may request a compulsory license, which is subject to precise and particular rules, and which is valid only in the country where there is the patent title. The request for a compulsory license is granted when the object of a patent is executed insufficiently for the needs of the State, or is not executed by the owner or by his successor in title, or by a licensee by means of production in the State, or by means of import of objects produced in the European Economic Area or a member State of the World Trade Organization. The proprietor of a patent may assign to other parties, by means of a specific license agreement, the right to exploit the total or partial contents of a patent, within agreed limits to be determined by the contracting parties. Such limits may concern the remuneration, the duration of the license, the territory covered, the type of use, and the type of exploitation etc. Licenses may be exclusive, or not, and may permit sublicenses, or not. They may also be used in opposition against the licensor, if so provided by the agreement. It must be remembered that the agreements between Companies are subject to the provisions of art. 101 of the Treaty on the Functioning of the European Union (2012/C 326/01). Regulation n. 316/2014, published on the Official Journal on 28 March 2014, disciplines the exemption, and the limits of the exemption, concerning Article 101.

Technology transfer agreements are thus regulated, understood as:

  1. licensing agreements for rights relating to technology, agreed between two Companies and regarding the production of contractual goods by the licensee and/or his subcontractors;
  2. the assignment of rights relating to technology between two Companies and regarding the production of contractual goods, where part of the risk connected to the use of the technology remains to the assignor.

The Regulation came into force on May 1 2014 and will remain in force until April 30 2026. The prohibition set forth in paragraph 1 of Article 101 shall not be applied between May 1 2014 and April 30 2015 to agreements already in force on April 30 2014 which do not meet the exemption requirements set forth in the new Regulation, but which on April 30 2014 met the exemption requirements as per Regulation (EC) n. 772/2004. The Regulation is not applied to clauses regarding licenses of research and development, which are governed by Regulation (EU) n. 1217/2010, or specialization agreements, which are governed by Regulation (EU) n. 1218/2010.

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