What is licensing, assignments and related transcriptions?

Licensing and sales are two services that Jacobacci & Partners offers to trademark owners that who wants to transfer rights in their trademark, either for the registration as a whole or for all or part of the products or services for which the trademark has been registered. Licensing is the transfer of usage rights where, generally speaking, in return for the usage rights, the licensee provides the licensor a percentage on the revenues generated by the use of the brand.

Following a license or assignment, it may be necessary to file a transcription of the transaction with the relevant trademark office. For example, Article 130 of the Italian Intellectual Property Code requires transcriptions must be presented before the Italian Patent and Trademark Office. Jacobacci & Partners can assist in understanding when this practice is necessary and ensure the process is carried out properly and in a timely manner.

Advantages

Success in entrepreneurial ventures requires being able to fully exploit the intellectual property that derives from creation and innovation. Licensing and sales of brand assets, including trademarks, should, therefore, be well planned in terms of future brand strategy and properly executed studied from a contractual point of view. Similar caution is necessary for the company acquiring such rights, particularly licenses for the use of industrial property rights that it did not develop internally.

On the licensing side, applying its consolidated international experience to the management of all aspects of these delicate issues subject thanks to our consolidated international experience, Jacobacci & Partners has developed license verification programs, which are fundamental tools available to clients before concluding the license. We have also developed plans for full implementation once the contracts are concluded. With this program, our professionals accompany the client, licensor or licensee, step by step throughout the course of the licensing relationship.

Risks

Licensing are transfer activities are complicated endeavours, and if managed without the appropriate understanding of the relevant transactions, may lead to procedural or administrative errors that could jeopardize the interests of both all contracting parties. The assistance of an experienced third party may help avoid these risks.

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