Alienation of a patent for an invention in Russia

After obtaining a patent for an invention, it is not only possible to use the development or technology for one's own needs. Russian and international law gives the opportunity to sell or buy a patent, as well as to transfer the rights to inventions on a temporary basis. To carry out such transactions, a license agreement or an agreement on the assignment of rights is executed.

Options for disposition of patent rights

The transfer of rights to an invention, utility model or industrial design is possible only after registration in the registry and obtaining a patent. For this purpose, the right holder applies to FIPS with an application, undergoes the verification and examination procedure, and pays the necessary fees and charges. After the granting of the patent, the transfer of exclusive rights may take place according to the following rules:

• full alienation of rights in favor of another person - an assignment agreement is concluded, under which the right holder retains the authorship, receives monetary remuneration, but cannot further dispose of the rights;
• transfer of rights under license terms - this form of agreement allows the transfer of rights on a temporary basis, and the parties agree on the amount of remuneration, term of transfer of rights, territory of permitted use and other issues;
• Each of the above agreements is subject to registration with Rospatent - both parties or one of the parties to the transaction may file such an application.

Coercion to conclude such agreements is not allowed, i.e. the right holder can decide on his own under what conditions the transfer or alienation of rights will take place.

The possibility of protection in the event of an infringement depends on the correctness of the agreements. Therefore, it is advisable to draw up such documents through professional specialists - patent attorneys. Prof-Patent invites cooperation and guarantees compliance with legal provisions and protection of client's interests when disposing of patent rights.

How to draw up contracts

The purchase or sale of a patent is formalized in the form of a written contract in which the parties independently determine the value of the transferred rights. To determine the amount of remuneration, patent attorneys or an independent appraiser can be consulted. Payments can be made in the form of a one-time remuneration, or regular deductions for a period specified in the agreement.

When drawing up a licensing agreement, the parties may agree on the following conditions:

• term of transfer of rights - the law contains no restrictions on the periods of validity of the license, and the contract may specify an indefinite period;
• the amount of remuneration and the procedure for its payment - a one-time payment, regular royalties, income from sales of goods using exclusive rights, etc;
• Territory covered by the license - the parties may specify one or more regions, or extend the license to the entire country;
• possibility to transfer rights under sublicense conditions without additional consent of the right holder.

A license agreement can be executed with several persons at once. In addition, the right holder can reserve the right to use the invention independently.

The registration of the agreements takes place through the FIPS. For this purpose, the parties to the transaction, or one of them, must submit the following documents (at the choice of the applicant):

• the original copy of the contract;
• an excerpt from the agreement stating the essential terms of the transaction - this document must be certified at a notary's office;
• notice of disposition of rights - this document must be signed by both parties to the transaction.

A license agreement can be executed with several persons at once. In addition, the right holder can reserve the right to use the invention independently.

The registration of the agreements takes place through the FIPS. For this purpose, the parties to the transaction, or one of them, must submit the following documents (at the choice of the applicant):

• demand the elimination of violations (e.g., if the license is used outside the agreed territory);
• to terminate the contract by force;
• to recover remuneration arrears, damages or compensation for infringement of rights.

With any option of disposing of the right, the authorship of the invention will remain unchanged, as it is inalienable.

Prof-Patent, a firm of patent attorneys in Russia and abroad, will ensure that contracts and other documents for the alienation of rights to inventions are prepared correctly, provide services for registration of the transaction in the Rospatent service and represent parties in dispute settlement and protection against infringement. To choose the best deal for you, contact our specialists for a consultation. You can do it by phone, indicated on the website, or via the feedback form.