Our advantages

8 out of 10 of our clients work remotely.

We will hold an online meeting, conclude an agreement and do the work remotely.ПWe will hold an online meeting, conclude an agreement and do the work remotely. It doesn't matter what town you're from.

We guarantee results, not just returns

We get to the contractually guaranteed result one way or another at any pay rate.

Fixing the price at the start

You will pay exactly the amount we discussed at the beginning. No surprise payments.

What we have achieved in 18 years?

More than 6,000 objects were registered

In all likelihood, your case is similar to the cases we have seen in our practice.

We represent interests in 65 countries of the world

For international registration, we resort to the help of reliable patent attorneys from abroad.

Certified Patent Attorneys

We are responsible to Rospatent. Attorney status does not require you to have a notarized power of attorney or an EDS.

Our team

Alexander Dubok

Head.

Transfer options

Depending on the nature of intellectual activity, you can register rights to the following objects:

standard objects of industrial property - inventions, industrial designs, utility models;
special objects of industrial property - topologies of integrated circuits, selection achievements;
objects of commercial property - trademarks, service marks, place of origin of goods, trade names of companies, etc;
special objects of copyright, for which voluntary registration is allowed - software products for computers and databases.

Despite the significant differences in the procedure for filing an application, carrying out expert examinations and obtaining registration documents, the rules of disposal of the exclusive rights will be identical for almost all intellectual property objects. Rights can be sold under an assignment agreement. Temporary transfer of the right of use is allowed on the basis of a licensing agreement.

Let us highlight the general rules of registration of licensing agreements which should be taken into account by the owners of intellectual property objects:

a license is a form of civil transaction under which the rights to the object are transferred for a certain period not exceeding the period of legal protection - for example, a patent for an invention is valid for up to 20 years, so issuing a license beyond this period is not allowed;
for objects of industrial and commercial property registration of licensing agreements must be accompanied by registration in the patent offices - if the parties do not comply with this legal requirement, the temporary transfer of the right of use will not be confirmed;
as a rule, the transfer of rights under a license is compensatory, and exceptions may be established only by law - for example, trademarks and other objects of commercial property may be transferred to other persons only for remuneration.

A license to use an invention or other result of intellectual activity may be exclusive or non-exclusive. In the former case, all rights are transferred to one person only and for the duration of the license even the right holder will not be able to use his technology or trademark to the extent specified in the contract. With a non-exclusive license, it is allowed to transfer rights to several persons at once, and the owner of the object may stipulate the condition of independent use of the patent or certificate.

How a license agreement is executed

The right holder can choose with whom, and on what terms to execute license agreements. Depending on the type of the object, and the plans of the owner of intellectual rights, the following variants of license agreements are possible:

transfer of exclusive rights to one intellectual property object;
Transfer of rights within the framework of the franchising agreement - in this case several licensing agreements may be executed at once for the technologies used in the production of products, production or provision of services;
sale of the product to the end user, who becomes the owner of the license - such agreements are possible for the object of copyright (e.g., software), when the purchase in the outlet or receipt of a copy via the Internet implies agreement with the terms of the license.

The terms of license agreements must be negotiated by the parties themselves. Coercion to perform such a transaction is not allowed, so without the consent of the owner it is not possible to draw up an agreement.

The exact list of conditions of the agreement will be determined by the contract. Let's highlight the most important moments that need to be agreed upon by the parties:

the subject of the transaction - the object of creative and intellectual work, the rights to which are transferred under license;
the term of the agreement - the counterparty may set any time frame, but within the scope of the protection regime;
procedure and terms of remuneration payment - lump sum payment, monthly payments, percentage of proceeds, etc;
territory of permitted use - the license may apply to the entire territory covered by legal protection, or to certain regions;
list of products and assortment of goods, which will be covered by the temporary right of use;
permission to transfer rights under sublicense - if there is such a clause, the temporary owner of the object will be able to transfer rights to other persons without additional approval of the right holder;
penalties for violation of the terms of the agreement;
a list of additional grounds for early termination of the license.

The amount of remuneration can be determined by the parties themselves, or by assessing the exclusive rights through an independent expert.

It should be taken into account that in case of improper performance of the license agreement, claims against the infringer can be made only on the items specified in the text of the document. For example, if the right holder does not provide in the agreement a clause on the territory of technology use, he will not be able to revoke the license if the territorial attributes are violated.

Amendments to the license agreement can be made only with the mutual consent of the parties. Supplementary agreements must be registered through the patent services according to the general rules.

To take into account all the requirements of national and international legislation for the design of license agreements, use the services of our company. We will help you to draw up an agreement correctly, settle disagreements between the parties and assist you with registration of the transaction in Rospatent.

How to register a license agreement

Registration of a license agreement for a patent or a trademark certificate is carried out through patent offices. In Russia, such a service is the FIPS (Federal Institute of Industrial Property). To register the agreement, an application as well as one of the following documents (at the choice of the parties) must be submitted:

an original copy of the agreement signed by both parties;
written notification of the transfer of the right of use, signed by both parties;
an excerpt from the contract, certified through the notary's office.

The application and one of the above documents may be submitted by the parties themselves or through a representative under a power of attorney.

Registration of the received documents is carried out. It consists in verification of powers to dispose of the object of intellectual property, as well as in making the appropriate entry in the registers. Depending on the terms of the transaction, the registry may contain information on several licenses at once.

If the terms of the transaction allowed the transfer of rights under a sub-license, such agreements are also subject to registration through Rospatent. In order to perform registration activities and enter relevant information in the registry, the parties need to submit the consent of the right holder for execution of the sub-license, or the original agreement with this clause.

The right to use the object of copyright may also be transferred under license. However, registration of such contracts is not required, although the parties may certify the transaction through a notary or use the services of copyright societies. The rule on mandatory registration must be observed for computer programs and databases, if the rights to these objects of copyright were registered by developers on a voluntary basis.

Order of termination of contract

The basis for termination of a license agreement may be the expiration of its term, or a mutual decision of the parties. If the license has expired and has not been renewed by the contracting parties, the information in the registry will automatically be cancelled. If the agreement is terminated voluntarily, the parties or the right holder must submit an application to FIPS; according to this document the entry on the license issued will be annulled in the Registry.

In case of significant violations of the agreement, its unilateral termination is allowed. For this purpose the following rules must be taken into account:

the right holder must send to the counterparty a written demand to eliminate violations of the agreement, compensation for damages or payment of remuneration, early termination of the contract;
if such a demand is refused, or the infringer evaded the answer, it is possible to apply to the judicial authorities with a claim for termination of the contract and recovery of damages;
in the judicial process it is necessary to prove the essential nature of the violation - under this condition, the court will order the termination of the licensing agreement.

Based on the judicial act, the information about the license agreement will be annulled in the registries of Rospatent.

If you need assistance in terminating the license agreement and holding the infringer liable, please contact our specialists for assistance. We can help identify and prove infringement, calculate the damages or compensation, draft documents for filing claims and defending the case in court. To learn more about the terms of cooperation with our company you can call us on the phone numbers listed on the website or via the feedback form.