ASSIGNMENT AND CESSION OF OWNERSHIP RIGHTS (ALIENATION OF RIGHTS)
PREPARATION AND REGISTRATION OF THE AGREEMENTS
The rights to the protected intellectual property subjects owned by one person (a juridical person or a physical person) can be surrendered (alienated) or assigned for temporary use to another person.
- Preparation and registration of an agreement of surrender (alienation) of an intellectual property subject
- Preparation and registration of a license agreement
- Preparation and registration of a franchising agreement
- Preparation of an option contract
- Preparation of an agreement between several authors
- Preparation of an authorship agreement and registration in the Russian Authorship Society
An owner of an intellectual property (patent holder, possessor of a right) can delegate all the rights to the intellectual property to any juridical or physical person (self-employed sole trader). This needs an agreement of surrender (alienation) of an intellectual property item.
Transfer of rights for the temporary use to another person with reservation of the rights of a patent holder or a possessor of a right. This needs a license agreement.
Agreement of surrender (alienation) of an intellectual property and a license agreement are subjects of compulsory registration in the Patent Office of Russian Federation, otherwise they are invalid.
The exclusive license agreement grants the grantee of license the right to use the item of industrial property within the framework of the agreement. The holder of patent (grantor of license) can reserve the right to use the item in the part that is not transferred to the grantee of license. But the grantor of license does not have a right to grant licenses on the same conditions to the third party.
Under the agreement of non-exclusive license the grantor of license grants the grantee of license the right to use the item of industrial property and reserves all the patent rights including a right to grant licenses to the third party.
In accordance with article 1028 of the Civil code of Russian Federation, to the competence of Executive authority in the field of patents and trademarks (Patent office of Russian Federation) attributed the registration of commercial concession agreements (Chapter 54 of the Civil code), if the complex of rights transmitted under such contract includes protected items of industrial property.
Registration of these agreements shall be in accordance with the Rules of examination and registration of contracts of assignment of a patent and the right to use the invention, utility model, industrial design (hereinafter “the Rules”).
Mandatory registration is also needed for the changes and additions to the registered contracts relating to the definition of the parties, the subject matter of the contract, scope of transferred rights, territory and term of validity, including early termination of the contract (paragraph 6 of the Rules).
Registration of amendments is based on the agreement of the parties. According the general rule, a court decision (article 450 of the Civil code of Russian Federation) is needed to change the contractual obligations at the request of one of the parties. In this case, the registration is made on the basis of a judicial decision.
However, please bear in mind that Rospatent has no authority of control of the execution of the registered contracts and related obligations by the parties, including obligations related to patent legal guarantees.
All disputes related to the conclusion and execution of license agreements are considered in the court (article 31 of the Patent law of the Russian Federation).
The person in whose name the patent is sought on an application filed in the Patent office, may enter into contracts, which are based on the right to a patent application in various stages of its preparation. But such agreements are not subject to registration in Rospatent, i.e. they are valid without registration prior to the issuance of a patent for industrial property.
COPYRIGHT LAW (author's right; trademark rights)
In the law "On copyright and related rights", the parties to the contract are referred to as "author" and "user".
The transfer of property rights is executed on the basis of the authorship agreement (author's contract).
The authorship agreement (author's contract) of the transfer of exclusive rights allows the use of the work in a certain way and in the limits set by the agreement only by the person to whom those rights are transferred, and gives that person the right to prohibit such use of the work by others.
The authorship agreement of transfer of non-exclusive rights allows the user to use the work on equal terms with the owner of the exclusive rights (the author) who had transferred such rights to other persons authorized to use this work in the same way.
The documents to be registered and deposited in the Russian Authorship Society:
- The author's contract of transfer of property rights to use of the work on exclusive or non-exclusive basis;
- The author's contract of creation of the audiovisual work;
- The author's contract on the assignment of property rights to use the work;
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