intellectual property Archives - Polikarpov Law Firm

Q: What if the idea belongs to me, but the technical implementation (code, design) was done by an employee or freelancer? Who owns the final product?

You remain the owner of the idea, but, as we know, ideas cannot be protected. The owner of the final product (the IP object) is the person who legally owns the property rights to its implementation. And here there is a big difference: <ul> <li aria-level="1">Employee: If creating the code/design was part of their job responsibilities and this is specified in the employment contract, the property rights to the work product belong to the employer by default (i.e., you). </li> <li aria-level="1">Freelancer/contractor: By default, the property rights to the code/design they create remain with the freelancer! You only get the right to use the work, but you do not become its owner.</li> </ul> Always sign a contract with a freelancer that includes a clear clause on the full transfer (alienation) of exclusive property rights to the created product to you as the customer. Without this document, you are not legally the owner of the result for which you paid money.

Question 1

My product is protected by patent, trade mark and copyright. What happens when the patent runs out in 20 years? Will someone be able to copy my product completely?

Accepted Answer

When a patent expires, the technical solution it protected becomes public domain. This means that any competitor can legally use your technology or manufacture a product with the same design.

However, they will not be able to copy your product completely if you retain other valid rights:

Trademark: Your competitor will not be able to sell their product under your registered name and with your logo. This will allow you to retain the loyalty of customers who trust your brand.
Copyright: They will not be able to copy your program code, instructions, advertising texts or website design.
Industrial design: If you have a valid patent for design, they will not be able to copy the appearance of the product.

Once the patent expires, you lose your monopoly on the technology, but a strong trademark and other IP assets allow you to continue to compete successfully in the market thanks to your reputation and brand recognition.

Question 2

My partner and I founded a start-up together. How can we properly register our intellectual property rights (name, code) to avoid conflicts in the future?

Accepted Answer

This is a critically important step that must be taken at the very beginning. There are several key points to consider:

Joint ownership of trademarks and patents: You can register a trademark or patent for several co-owners at once (for example, for two founders as individuals or for your joint company). All owners will be listed in the certificate/patent.
Founders’ Agreement: This is a crucial document. It must clearly specify:
- Who contributed to the creation of the IP and what their contribution was.
- How decisions regarding the IP will be made (e.g., only by mutual agreement).
- What will happen to the rights if one of the founders decides to leave the business (does the other have the right to buy out their share, under what conditions, etc.).
Transfer of rights to a legal entity: The cleanest option is to register a limited liability company and conclude agreements under which all founders transfer the IP objects they have created (code, design, rights to the name) to the balance sheet of this company. In this case, the owner will be a business rather than an individual.

Don’t rely on verbal agreements. Formalising joint ownership and a contract between the founders is the only way to avoid future corporate wars.

Question 3

The article says that IP is a valuable asset. But how is its value assessed in practice, for example, for contribution to the authorised capital or for the sale of a business?

Accepted Answer

Intellectual property valuation is a complex procedure carried out by certified appraisers. There are three main approaches:

Cost approach: The cost of intellectual property is determined as the sum of all costs incurred in its creation (developers’ salaries, registration costs, marketing, etc.). This is the simplest but least accurate method, as it does not take future potential into account.
Market (comparative) approach: The value is determined by comparing it with the prices of similar IP assets that have recently been sold on the market. This method works well for standard assets (e.g., domain names), but is difficult to apply to unique inventions.
Income approach (most common): The value of IP is calculated based on the future economic benefits (income) it can generate. The appraiser forecasts future cash flows from the use of the IP (e.g., profits from the sale of goods under the trademark or royalties from licences) and discounts them to their present value.

For official procedures (contribution to authorised capital, recording on the balance sheet), an official valuation report from a qualified valuer is required.

Question 4

Does Ukrainian registration (TM certificate, patent) protect my rights abroad, for example, in the EU or the USA?

Accepted Answer

No, it does not. Intellectual property rights are territorial in nature. This means that a protective document (certificate or patent) issued in Ukraine is valid exclusively within the territory of Ukraine.

If you plan to enter markets in other countries, you need to take care of the international protection of your rights. There are special procedures for this:

For trademarks: The Madrid System (allows you to file a single application for protection in 130 countries) or European Union Trademark (EUTM) registration.
For inventions: The PCT (Patent Cooperation Treaty) procedure, which simplifies the filing of applications in many countries around the world.
For industrial designs: The Hague System, which provides protection in 90+ countries.

Before entering any foreign market, it is necessary to conduct a separate check there and initiate the registration procedure.

Question 5

What if the idea belongs to me, but the technical implementation (code, design) was done by an employee or freelancer? Who owns the final product?

Accepted Answer

You remain the owner of the idea, but, as we know, ideas cannot be protected. The owner of the final product (the IP object) is the person who legally owns the property rights to its implementation. And here there is a big difference:

Employee: If creating the code/design was part of their job responsibilities and this is specified in the employment contract, the property rights to the work product belong to the employer by default (i.e., you).
Freelancer/contractor: By default, the property rights to the code/design they create remain with the freelancer! You only get the right to use the work, but you do not become its owner.

Always sign a contract with a freelancer that includes a clear clause on the full transfer (alienation) of exclusive property rights to the created product to you as the customer. Without this document, you are not legally the owner of the result for which you paid money.

Blog

Privacy settings

Manage settings

Necessary

Marketing

Personalization

Analytics