Licensing, transfers and IP structures: the decisions this practice answers
This practice covers three linked decisions: how a right is transferred, how it is licensed, and how the resulting structure is recorded. It applies to trade marks, software, databases and unitary patents. Each page below answers one of these questions for one asset type, at one stage of a deal.
What belongs here, and where it comes from
The scope follows the type of right, not the type of contract. Four EU instruments set the outer boundary for the assets this practice structures.
| Right or asset | EU basis | Typical question |
|---|---|---|
| EU trade marks | Regulation (EU) 2017/1001 (EUTMR) | Licence recordal, assignment, co-existence |
| Computer programs | Directive 2009/24/EC | Ownership versus licence, source code access |
| Databases | Directive 96/9/EC | Sui generis right, terms for structured data |
| Unitary patents | Regulation (EU) No 1257/2012 | Unitary effect, licence registration |
National law fills the gaps each instrument leaves open, including the form a licence must take to bind a third party.
Related areas of intellectual property practice
Licensing questions rarely stand alone. Three adjoining areas come up often enough to link directly.
- Brand portfolios raise their own registration and enforcement issues — see Trade marks, designs and brand portfolios: the decisions this.
- A licence is only as strong as the underlying ownership claim — see Ownership of results overview.
- Digital assets built on distributed ledgers raise a parallel set of questions — see Tokenised rights and digital objects and its limits.
What changes in practice
An unrecorded licence still binds the parties who signed it. It does not automatically bind a buyer who later acquires the licensed right, and it may not survive an insolvency of the licensor. The gap surfaces at the worst possible moment: during due diligence, or once a dispute has already started.
A transfer without a written assignment can leave ownership ambiguous, even where both sides agree on what was intended. Courts and registries look at the document, not at what everyone assumed at the time.
What to do first
- List every right involved — trade mark, software copyright, database right, patent — before drafting anything.
- Confirm who currently holds each right, and whether an earlier agreement already licenses it to someone else.
- Decide whether the deal needs a licence, an assignment, or both instruments together.
- Draft the recordal step alongside the substantive terms, not as an afterthought once signatures are in place.
- Share the underlying documents with us early; our Privacy notice overview explained sets out how we handle them.
Who decides, and on what timeline
A trade mark licence is recorded at the relevant registry, national or EU-wide, depending on the right involved. A patent licence follows the same logic once unitary effect applies to it. Software and database rights rarely need registration, so the licence agreement itself is the operative document between the parties. National courts intervene only once a dispute reaches them, and the timing then follows the procedure of the forum named in the contract.
Which scenario fits you
If a licence already exists but has never been recorded, the priority is the recordal step, not new drafting.
If no agreement exists yet and a deal is imminent, the priority is choosing between an assignment and a licence before the commercial terms are fixed.
If a dispute has already started, the priority shifts to the forum named in the contract, or to the default national court where none was named.
What this page does not resolve
This hub does not draft a licence and does not price a specific structure. It does not replace the asset-specific pages linked above, and it does not extend to the tax treatment of a transfer, which sits outside this practice.
Related publications
For the recordal step in detail, see A licence must be recorded to be effective IP.
Verified
Checked against Regulation (EU) 2017/1001 (EUTMR), Directive 2009/24/EC, Directive 96/9/EC and Regulation (EU) No 1257/2012, current as of the publication of this page.
FAQ
What does this change in practice?
It moves the licensing decision earlier, before drafting starts, so recordal and ownership checks run alongside the deal rather than after signing.
Which deadline applies?
The applicable deadline depends on the right and the registry involved. Trade mark and patent recordals follow the timeline set by the relevant office. Software and database licences carry no registration deadline, because no registry is involved.
What do you need from us to start?
A list of the rights involved, copies of any existing agreements, and confirmation of who currently holds each right.