When improvements are claimed by both sides: what to do first
When both the licensor and the licensee claim ownership of an improvement made under an IP licence, the first task is to stop new use of the improvement and secure the record of who created it, when, and under what version of the licence. Ownership gets decided later; controlling the record and the clock comes first.
The legal basis
No single EU rule governs ownership of improvements as such. The answer depends on which right is affected. Software modifications fall under Directive 2009/24/EC, which frames who may adapt a program and on what authorisation. Additions to a licensed database engage Directive 96/9/EC, which protects a new substantial investment separately from the original database. A redesign of a licensed EU trade mark sits under Regulation (EU) 2017/1001 (EUTMR). An improvement to an invention covered by a unitary patent falls under Regulation (EU) No 1257/2012. The licence itself, not the regulation, usually states who owns an improvement; the regulation only decides which right the improvement created in the first place.
A similar authorship question arises outside licensing, when a data set is compiled by staff rather than by an external contractor. That fact pattern is treated separately in What to do first in this situation in detail, though the underlying facts there concern personnel, not a licence.
What changes in practice
A dual claim over an improvement freezes several things at once. Neither side can safely license the improvement to a third party until ownership is settled, because a warranty of clean title cannot be given while a rival claim exists. Sublicensing, assignment, and further development all slow down or stop entirely.
Meanwhile, a limitation clock is already running under the national law that implements the relevant directive. The exact length of that period is set nationally, not by the EU act itself, and it does not pause because the parties are still arguing. Waiting to see who acts first shortens the time left to act; it does not lengthen it.
What to do first
- Freeze further commercial use of the improvement by both sides pending resolution; a written notice from the licence manager records the exact date this freeze began.
- Collect the version history — source files, drafts, dated correspondence, and the text of the licence in force when the improvement was made.
- Identify which right is affected: software, database, trade mark, or patent. The applicable EU framework and the relevant national implementing act differ by right.
- Instruct counsel to check the licence clause on improvements, assignment, and grant-back before any external claim is raised or answered.
- Notify the counterparty in writing that a competing claim exists and that use is suspended, to prevent a later argument that silence amounted to a waiver.
- Set an internal decision deadline for escalation, so the dispute does not drift into litigation by default rather than by choice.
Who decides, and on what evidence
Most licences name a forum for this kind of dispute — arbitration, a named court, or an expert-determination clause — and that clause controls first. Absent such a clause, the general rules on contractual jurisdiction in the parties' home state apply instead.
The decision-maker looks at three things: the licence wording on improvements, the dated development record, and the authorisation trail for each disputed change. A claim without a dated record rarely survives contact with evidence. A claim supported by one usually narrows quickly to a smaller, provable dispute over a specific change rather than the whole improvement.
If your situation differs
The governing framework changes with the right in question. The table below sets out four common variants and what tends to be contested in each.
| Type of improvement | Governing EU framework | What is typically contested |
|---|---|---|
| Software modification made under licence | Directive 2009/24/EC | Whether the change is an authorised adaptation or an unauthorised alteration |
| Extension of a licensed database | Directive 96/9/EC | Whether the addition reflects a substantial new investment giving rise to a separate right |
| Redesign of a licensed EU trade mark | Regulation (EU) 2017/1001 (EUTMR) | Whether the redesign remains use of the registered mark or creates a distinct sign |
| Improvement to an invention under a unitary patent | Regulation (EU) No 1257/2012 | Whether the improvement is a dependent invention requiring the original right holder's consent |
When the improvement touches a registered brand rather than code or data, the dispute often follows the same shape as a licensee who keeps using a mark after the licence has ended; that pattern is set out in A licensee keeps using the brand after termination trade mark cases specifically.
When the underlying right is a tokenised asset rather than a registered one, an improvement dispute frequently resembles a duplication event rather than a modification. The mechanics of that scenario are covered in When a fork duplicates the token in detail.
What this page does not cover
This page does not value the improvement, does not draft the licence clause that should have prevented the dispute, and does not replace a jurisdiction-specific review of the applicable national implementing act. It also does not cover disputes where no licence exists at all; that is a different starting point with different first steps. For the firm's overall scope on licensing and structuring work, see About the firm and its scope explained.
Related reading
A related dispute arises when the licensor's business enters insolvency before the improvement question is settled. That scenario, including which claims survive the licensor's insolvency and which do not, is set out separately: When a licence survives insolvency, or does not in insolvency proceedings specifically.
Verified
Sources referenced on this page: Regulation (EU) 2017/1001 (EUTMR); Regulation (EU) No 1257/2012; Directive 2009/24/EC; Directive 96/9/EC. National implementing acts and national limitation periods are not listed here because they vary by member state and sit outside the scope of this page.
FAQ
What is the first step when improvements are claimed by both sides?
Freeze further use of the improvement by both sides and record, in writing, the exact date this freeze began. That date usually becomes the reference point for every later argument about waiver and delay.
Which deadline is already running?
A national limitation period tied to the underlying right starts running from the date of the disputed modification. Its length is set by national law implementing the relevant EU directive, not by the EU act itself, so it must be checked country by country.
Who decides, and on what evidence?
The forum named in the licence decides first, based on the licence wording, the dated development record, and the authorisation trail for the disputed change. Absent such a clause, the general rules on contractual jurisdiction in the parties' home state apply.