UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights Unless the law stipulates otherwise, agreement on assignment of IP rights shall be made in writ- ing, otherwise it shall be considered null and void. Registration of the assignment agreement with the PTO is obligatory with regard to patents. However, registration of commercial secret assignment agreements is not obligatory. The parties shall determine a specific object of IP rights to be assigned (secret technical infor- mation, patent, etc) and specific rights to be assigned. Provisions of the assignment agree- ment which lead to a deterioration of the situation for the creator of respective objects compared to provisions of law, or limiting it in creating other objects, shall be deemed null and void. Assignment of IP rights shall not affect validity of any licences issued with regard thereto. 10.2 Procedure for Assigning an Intellectual Property Right The procedure for assigning an IP right depends on whether the assignment needs to be regis- tered. If it must not, the procedure consists of executing the agreement. If it must, an original copy of the executed assignment agreement has to be provided to the UA PTO and a respective official fee should be paid to secure registration of the IP rights transfer. 10.3 Requirements or Restrictions to License an Intellectual Property Right Licensing an IP right may be done either through a licensing agreement or via a licence as a sep-
• make such a decision; and • be a party’s attorney in the same case in which they have acted as mediator. A mediator may perform their function for a fee or for free. The parties may choose the media- tor and determine the relevant matters, options for settling the conflict, contents of a settlement agreement, etc. A person must pass training and obtain a certificate to be eligible for the media- tor’s role, and must follow the rules of profes- sional ethics. Mediation is based on the oral or written media- tion agreement concluded between the mediator and the parties. If successful, it ends with an agreement detailing mutually agreed obligations, terms and conditions of their fulfilment, and the results of a failure to fulfil those terms and condi- tions or improper fulfilment of them. Mediation ends: • if any party or mediator declines to further participate in mediation or is unable to do so due to death, dissolution, incapacitation, etc; or • for any other reason stipulated in the media- tion agreement. • if no agreement is reached; • with the expiration of its term; If the parties agree to initiate mediation dur- ing court proceedings, the hearing may be adjourned within procedural terms of case con- sideration. The parties may file a joint motion to stay the court proceedings for the period of mediation – in which case the court is obliged to stay the proceedings for a maximum of 90 days.
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