By patenting a new technology or registering a trademark, the right holder acquires property rights to industrial or commercial property. This means that the owner of the patent or registration certificate can use the object at his own discretion, including transferring the rights to it to others.
Depending on the nature of intellectual activity, you can register rights to the following objects:
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 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.
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:
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 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.
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:
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.
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:
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.