Changes in ownership, licence contracts

36. (1) Any change in the ownership of a patent, a utility model certificate, the certificate of registration of an industrial design or the certificate of registration of a mark or collective mark or in the ownership of an application therefor, shall be in writing and shall, at the request of any interested party to the Registrar, be recorded and, except in the case of an application, be published by the Registrar. Such change shall have no effect against third parties until such recording is effected.

(2) Any change in the ownership of the registration of a collective mark or in the ownership of an application therefor, shall require previous approval by the Minister.

(3) Any change in the ownership of a trade name shall be made with the transfer of the enterprise or the part thereof identified by that name and shall be in writing.

(4) A change in the ownership of the registration of a mark or in the ownership of a collective mark shall, however, be invalid if it is likely to deceive or cause confusion, particularly in regard to the nature, origin, manufacturing process, characteristics, or suitability for their purpose, of the goods or services in relation to which the mark or collective mark is intended to be used or is being used.

(5) Any licence contract concerning a patent, a utility model certificate, a registered industrial design or a registered mark, or an application therefor, shall, on pain of invalidity, be submitted to the Registrar who shall keep its contents confidential but record it and publish the fact of having recorded such licence cotract.
(6) Where the Registrar, after consultation with the Minister, is of the opinion that any clause in a licence contract or relating to such a oontract imposes unjustified restrictions on the licensee, with the consequence that the contract, taken as a whole, is harmful to the economic interests ofLesotho, the Registrar shall notify the parties to the contract accordingly and invite them, several times ifhe deems it necessary, to modify the contract so that it does not contain any such clause and, if they fail to do so, he shall declare the clause to be null and void.

(7) For the purposes of this Order, "unjustified restrictions" are restrictions which entail for the licensee, in the industrial or commercial field, restrictions not deriving from the rights conferred by the grant of a patent or a utility model certificate or the registration of an industrial design or a mark or restrictions unnecessary for the safeguard of those rights.

(8) In the examination of contracts under subsection (6), the Registrar, with regard to licence contracts relating to patents and utility model certificates, shall take into consideration, in particular, any clause contained in a contract the effect of which would be,

(a) to import technology from abroad when substantially similar or equivalent technology may be obtained on the same or more favourable conditions without any importation of the technology from abroad;

(b) to oblige the licensee to give consideration which is disproportionate to the value of the technology to which the contract relates;

(c) to oblige the licensee to acquire any materials from the licensor or from sources designated or approved by the licensor unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced and provided that the said materials are supplied at a reasonable price;

(d) to restrict the licensee's freedom to acquire any materials from any source, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;

(e)  to restrict the licensee's freedom to use any materials which are not supplied by the licensor or by source designated or approved by the licensor, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;

(f) to oblige the licensee to sell the products produced by him exclusively or principally to persons designated by the licensor;

(g) to oblige the licensee to make available to the licensor, without appropriate consideration, any improvements made by the licensee with respect to the technology to which the contract relates;

(h) to limit the quantity of the products produced by the licensee;

(i) to restrict the licensee's freedom to export or to allow others to export the products produced by him, provided that if the licensor owns, in a country to which such a restriction applied, a patent which would be infringed in case of importation of the said products into the said country, if the licensor has a contractual obligation not to allow others to export the said products to such a country or if the licensor already supplies the market in such a country with the same products, such facts shall be taken into account;

(j) to oblige the licensee to employ persons designated by the licensor not needed for the efficient transfer of the technology to which the contract relates;

(k) to impose restrictions on research or technological development carried out by the licensee;

(I) to restrict the licensee's freedom to use any techonology other than the technology to which the contract relates;

(m) to extend the coverage of the contract to technology not required to achieve the objective of the contract and to oblige the licensee to give consideration for such technology;

(n) to fix prices for the sale or resale of the products produced by the licensee;

(0) to exempt the licensor from any liabilil"y resulting from any defect inherent in the technology to which the contract relates or to restrict such liability

unreasonably;

(p) to  restrict the licensee's freedom to use, after the expiration of his contractual obligations, the technology acquired as a result of the contract, subject, however, to any right of the licensor under a patent;

(q) to establish the duration of the contract for a period which is unreasonably long in relation to the economic function of the contract, provided that any period which does not exceed the duration of the patent to which the contract relates shall not be regarded as unreasonably long.