PPT - WIPO

UNCITRAL
United Nations Commission on International Trade Law
Security interests in intellectual property
Spiros V. Bazinas
Senior Legal Officer
UNCITRAL Secretariat
Outline
1. Purpose of work
2.1. Scope of work: assets and transactions covered
2.2. Scope of work: the relationship between IP and ST law
3. Creation and third-party effectiveness
4. Priority, enforcement and applicable law issues
5.1 Insolvency of the licensor
5.2 Insolvency of the licensee
6. Conclusions
UNCITRAL
United Nations Commission on International Trade Law
1.
Purpose of work
•
Economic development depends, to a large extent, on innovation.
•
Innovation requires funding, but is subject to IP law.
•
The main purpose of UNCITRAL’s work is to facilitate intellectual
property (IP) financing within the parameters of IP law.
–
Allow authors, inventors and lesser rights holders to use their IP rights as
security for credit, to the extent permitted under IP law
–
Allow secured creditors to obtain a security interest (SI) in an IP right,
determine its priority and enforce it within the limits of IP law.
UNCITRAL
United Nations Commission on International Trade Law
2.1.
Scope of work:
assets and transactions covered
•
The characterization of IP rights and whether they may be encumbered is a
matter of IP law.
•
Within these limits, the Guide and the IP Annex are based on the assumption
that a SI may be created in a patent, trademark or the economic rights under a
copyright, the rights of a licensor or the rights of a licensee.
•
Transactions covered include all transactions that serve security purposes, no
matter how they are denominated (pledges, mortgages, trusts, security transfers,
etc.).
•
Outright transfers of IP rights are not covered, except that when they compete
with a SI in an IP right, the Guide and the Annex set out priority rules.
UNCITRAL
United Nations Commission on International Trade Law
2.2.
Scope of work:
The relationship between IP and ST law
•
In principle, ST law (the LG) covers SIs in IP rights.
•
However, if ST and IP law apply to the same matter and lead to a different
result, IP law prevails, provided that the IP law rule is IP specific, i.e. it applies
only to Sis in IP rights and not to SIs in other assets.
•
There is no overlap and thus no conflict with respect to the creation,
effectiveness, priority and protection of an IP right itself, but only with respect to
the creation, third-party effectiveness, priority and enforcement of an SI in an IP
right.
•
Relationship between the Guide and the IP Annex: the general discussion and
recommendations apply to Sis in IP rights, as supplemented or revised by the
IP-specific discussion and recommendations.
UNCITRAL
United Nations Commission on International Trade Law
3.
•
Creation of an IP right (matter of IP law)
–
–
•
Security agreement
Third-party effectiveness of an IP right (matter of IP law)
–
•
IP right (patent and trademark): registration of document or other act
IP right (copyright): automatic creation of the copyright upon creation of the protected work
Creation of an SI in an IP right (matter of ST law)
–
•
Creation and third-party effectiveness
Often, automatic third-party effectiveness upon creation of an IP right
Third-party effectiveness of an SI in an IP right (matter of ST law)
–
–
Registration of notice
Coordination of registries (document v. notice filing, asset-based index v. debtor-based index and
creation, declaratory or evidentiary effects v. third-party effects
UNCITRAL
United Nations Commission on International Trade Law
4. Priority, enforcement and
applicable law issues
•
Priority of an IP right (matter of IP law)
–
–
•
Priority of an SI in an IP right (matter of ST law)
–
–
•
Enjoy use and benefits of IP right
Protection against infringers
Enforcement of an SI in an IP right (matter of ST law)
–
–
•
First in time of registration
Ordinary-course-of-business non exclusive licensees
Enforcement of an IP right (matter of IP law)
–
–
•
First in time of transfer
Absence of knowledge of a prior transfer
Tangible assets including IP rights: repossession and sale of the assets
IP rights: sale or licence of an IP right
Applicable law issues
–
–
Contractual matters: the law chosen by the parties
Proprietary matters: the law of the country in which protection is sought v. the law of the
debtor’s country
UNCITRAL
United Nations Commission on International Trade Law
5.1 Insolvency of the licensor
Loan
Insolvency
B2
Licensor
SI in Royalties
Licence
Royalties
Loan
Licensee
SI in Subroyalties 1
Sublicence 1
B1
Subroyalties 1
Loan
Sub. 1
SI in Subroyalties 2
Sublicence 2
Subroyalties 2
Sub. 2
UNCITRAL
United Nations Commission on International Trade Law
B3
5.2 Insolvency of the licensee
Loan
B2
Licensor
SI in Subroyalties 1
Licence
Royalties
Loan
Insolvency
B1
Licensee
SI in Subroyalties 1
Sublicence 1
Subroyalties 1
Loan
Sub. 1
SI in Subroyalties 2
Sublicence 2
Subroyalties 2
Sub. 2
UNCITRAL
United Nations Commission on International Trade Law
B3
6.
•
•
WG VI has reached agreement on a number of issues to be
addressed by new commentary or recommendations.
WG VI still needs to reach agreement on a number of other issues:
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–
–
–
•
•
Conclusions
Coordination of registries
Priority issues (ordinary-course of business non-exclusive licences)
Insolvency-related issues
Applicable law issues
WG V and WG VI cooperate to resolve issues relating to the
coordination of IP, ST and insolvency law.
Schedule of meetings:
–
–
UNCITRAL
Next WG VI meeting: NY, 27 April to 1 May 2009
Estimated completion of the Annex: at the 42nd session of the Commission
in 2010 (Vienna, 21 June-9 July 2010).
United Nations Commission on International Trade Law