Agreements, licensing and technology transfer

Stages of the procedure

1. 01

   Check title and subject matter

   Identify right numbers, owners, co-owners, existing licences and encumbrances. In research and development, distinguish pre-existing knowledge from the new project’s results. Paying an invoice for design work or prototype manufacture does not by itself settle every question about acquisition of intellectual-property rights.

2. 02

   Agree how the asset may be used

   Define exclusivity, territory, duration, permitted applications of the technology, sublicensing and further development. Confidentiality, quality, documentation and access to knowledge required for implementation also matter. Competition restrictions and tax consequences may need separate review by specialists qualified in those areas.

3. 03

   Drafting, legal form and negotiation

   Address payment, sales reporting, audit rights, liability and responsibility for third-party disputes. Check the form required for the relevant right. Polish law requires, for example, a written patent assignment and a written patent-licence agreement under pain of nullity. A generic template may omit features essential to the transaction.

4. 04

   Implementation and register updates

   After signature, deliver the agreed materials and make required or appropriate recordals. The legal effect of registration must be checked for each right: a Polish patent assignment becomes effective against third parties upon entry in the patent register. Plan separately for termination, return of materials and continuing confidentiality.