Registration of a license agreement
The owner of exclusive rights to a particular object has the right to both independently enjoy the existing benefits and make a profit through the provision of rights to use under a license agreement. If questions arise regarding the objects for which the license agreement is being registered, then it is necessary to focus on Part 4 of the Civil Code of the Russian Federation for patents, trademarks, database licenses, and software.
If the right holder, acting as a licensor, gives permission to use his intellectual property, then the other party, the licensee, assumes the obligation to pay and perform other actions prescribed in the contract. In order for a document that gives hope for fruitful cooperation between the parties not to be declared invalid, it is necessary to approach compliance with the requirements stipulated for state registration of a written form of a license agreement.
How to register a license agreement with Rospatent
You should count on the support of the legislation only after the state registration procedure has been carried out in Rospatent. But first of all, you need to prepare documents, in which well-trained employees of the patent agency, who can quickly assess the situation, possible risks and do everything to make the registration successful, will provide invaluable assistance.
The cost of registering a license agreement
The following factors influence the formation of the cost of registration services:
The number of objects, the complexity of the fixed settlement system, the features of use and control that must be specified in the contract.
An agreement planned for registration on standard terms is assessed:
| type of contract | fee | duty | term |
| trademark agreement | 15 000 | 13 500 | 7 days |
| invention contract | 15 000 | 1 650 | 7 days |
| utility model contract | 15 000 | 1 650 | 7 days |
| industrial design contract | 15 000 | 1 650 | 7 days |
| computer software contract | 15 000 | 675 | 7 days |
Information required for registration of the contract
1. The name of the organization corresponding to the constituent documents, including the name and position of the head, legal address, bank details. In accordance with specific circumstances, information about the copyright holder as an individual entrepreneur may be required. You will also need his postal address, zip code and passport details. Attached is a copy of the certificate of entry into the EGRIP.
2. A complete list of goods and services for which an agreement is being drawn up.
3. Laconic description of the patented object for which the license agreement is concluded.
4. A copy of a patent or certificate guaranteeing exclusive rights.
5. Draft agreement indicating the scope of rights granted, territory and validity period.
The most important thing that is indicated in an agreement of this kind is the subject itself, with respect to which the transfer of rights is planned. You will also need a detailed indication of the methods of using this object, since it is allowed to dispose of it only to the extent prescribed in the contract. The document should indicate both the amount of remuneration that will have to be paid to the licensor and the procedure for calculating it.
Territory of action
It is quite natural that the territory where you can freely use the object of intellectual property specified in the license agreement is limited by the geography of validity of titles of protection issued by Rospatent. In addition, there is a possibility of narrowing the territory to specific regions of the country, which is necessarily stipulated in the contract.
License agreement form
Guided by the generally accepted rule, a license agreement is considered valid only in writing. However, there are some exceptions, for example,wrapper license giving the right to use the software and databases. Although the licensor and the licensee do not contact directly in this case, the start of use is automatically considered an obligation to comply with the terms of the license agreement indicated on the packaging of this very program or database.
Setting expiration dates
The period covered by the contract cannot exceed a certain time frame limiting the exclusive rights to the object of interest, which is established upon receipt of a patent or registration certificate.
In the case of using a trademark, the term is limited to ten years, but there is always the possibility of extending the contract when renewing the trademark.
For an invention, this period is defined as 20 years, for an industrial design - 25 years, for a utility model - 10 years. True, the validity of the license agreement has a chance of increasing in accordance with the extension of the protection rights. But in any case, the transfer of use rights is allowed only after the object has been patented and registered with Rospatent.
Benefits of Licensing
The benefit of using the license agreement is guaranteed to both parties. The licensor gets the opportunity for additional income and advertising of his object, and the licensee saves time and money necessary for the development, patenting and promotion of the object.
Types of license agreements
Before incurring material and time costs, you should know not only how to register a license agreement, but also the features of the types of such documents. For example, focusing on the scope of rights corresponding to a license agreement, a distinction is made between an agreement under which a non-exclusive license is issued, or a document granting an exclusive license.
The licensor, who wants to retain the right to enter into license agreements with different persons, as well as to use the intellectual property object at his own discretion, chooses a non-exclusive (simple) license. The granting of an exclusive license deprives the licensor of any opportunity (to the extent transferred to the licensee) to independently use the object and transfer it to other interested parties.
