One of the legal options for disposing of intellectual property rights is the execution of licensing agreements. This document allows you to define the procedure for transferring rights to third parties on a temporary basis. Specialists at Prof-Patent, a firm of patent attorneys, can help you draw up a license agreement correctly and protect the interests of the right holder.
License agreement - ( Art. 1235 Civil Code) a contract under which one party - the owner of the exclusive rights to results of intellectual activity or means of individualization (licensor) grants or agrees to grant to the other party (the licensee) the right to use such a result of such funds provided contractual limits.
The exclusive right to the results of intellectual labor is confirmed in the process of filing and consideration of the application in FIPS, as well as registration at the national or international level. Registration is confirmed by the issuance of a patent or certificate, after which the owner of the object can exercise his rights in the following areas:
A license grants the right to legally use someone else's rights to the extent specified in the contract. In particular, the parties may determine the territory in which the license is valid, the term of the contract, limitations on the release of certain products and other essential conditions.
The key advantages of transferring rights under a license include:
The rules for executing license agreements are set forth in the Civil Code of the Russian Federation. Patent attorneys and lawyers at Prof-Patent will provide a full range of services for registration of rights to any intellectual property objects, as well as the execution of license agreements in the interests of the right holder. We guarantee the shortest possible deadlines for the preparation and registration of the transaction, strict compliance with Russian legislation and international acts, and protection of the rights holder's interests during the term of the agreement.
You can only transfer rights under a license agreement if you have a patent or a certificate.
The following requirements should be taken into account when drawing up the contract:
The procedure of registration actions is regulated by the Decree of the Government of the Russian Federation from 24.12.2015 № 1416. Not only a party to the agreement, but also a representative under a power of attorney may submit an application. The best option would be to perform all actions through Prof-Patent's patent attorneys - in this case, any risks of refusal to register, or the return of documents without consideration would be eliminated.
The documents for the registration procedure include an application, as well as one of the following forms (at the applicant's choice):
There are special requirements for the content of the application.
The text of this document specifies the following amount of information:
Also the basis for registration of the transfer of the right to use the object can be a judicial act.
The parties to the transaction can independently determine all the terms of the contract. Depending on the agreement of the parties, the text of the document specifies the following points:
A special object of intellectual rights - the place of origin of products - may not be the subject of licensing agreements. Such a rule is fixed in Art. 1519 of the Civil Code of the Russian Federation.
When drawing up an agreement, it is necessary to carefully record all the terms of use of the intellectual property object. If violations of the license terms are identified, the content of the agreement will determine the possibility to prematurely terminate the use of rights, to recover compensation or losses from the guilty party. Therefore, it is advisable to entrust the support of these transactions to professional specialists - patent attorneys and lawyers.
The parties independently determine the terms of remuneration to the right holder. This may require the evaluation of rights, including through independent appraisers. Prof-Patent specialists will help to determine the procedure and terms of payment in favor of the right holder, as well as the evaluation of exclusive rights.
Violations in the use of the license may include the following:
Liability for the listed violations will occur in accordance with the terms of the contract and the provisions of the Civil Code of the Russian Federation. In addition to damages or monetary compensation, a material breach may lead to early termination of the license at the request of the right holder.
As the owner of any intellectual property right, be it patent, trademark, copyright, software or even plant variety, you can exploit that right for gain in any legal way you see fit. One simple method of doing so, which allows you to generate a revenue stream from the right, whilst someone else puts in the hard work to realise earnings from the right is to license this it to a third party. This allows them to utilise the right, under strict conditions specified and agreed upon by both parties. This differs slightly from a Franchise agreement in that it is regarding only one specific intellectual property and provision for how this is used is stipulated exclusively in the agreement. Any ancillary use not specified is not allowed and in breach of the said agreement.
As you would expect when dealing with such an agreement, the terms are intended to be strict and specific. If they are not it is likely that this agreement can be exploited by those you have granted the license to. If you want to ensure that your agreement covers the rights you wish to grant and no more, you must have the agreement drawn up by experienced legal professionals. License agreements must be made in written format and as they are regarding intellectual property, must also be submitted to Rospatent for registration. Agreements licensing rights which have not already been correctly registered with Rospatent will not be valid.
License agreements can be as simple or as complicated as one needs or wants, but it becomes more challenging when considering the intention of the licensor and licensee. You must consider the length of the agreement, the territory under which it is applicable. Is the right to be used exclusively or not. If exclusive this may preclude the licensor themselves for using the right in the territory stipulated in the agreement.
Foreign licensors can license their rights to third parties in the Russian Federation, directly or through a joint venture or by establishing a subsidiary. This makes it a very flexible model for expanding and operating in the Russian Federation with a sliding scale of risk and reward. However, these business entities must conform to Russian law by passing general tests on areas such as taxation, investment and antimonopoly. Consideration for these tests may require special filings or licence, registration and or a regulatory review.
Whilst there is nothing inherently complex about this area of intellectual property law, there is a multitude of considerations which could potentially trip you up as the licensor or licensee. Especially if you are operating from outside the Russian Federation. Consult us regarding any aspect of your licensing requirements and we can draft that agreement according to your wishes. We are also able to prepare and file any necessary documents to support registration of the agreement.
