A license agreement should be understood as a document that protects both parties (both the licensor and the licensee) when transferring intellectual property rights. Consider the concept, types and contents of the license agreement in more detail.
The concept
A license agreement is a contract that defines the conditions for granting to the licensee (user) the holder of the rights (licensor) for a trademark or invention to use the results of the latter in the user's activity. It should be added that the receiving party is obliged to make all types of payments under the license agreement to the account of the recipient of funds, as well as perform other actions agreed upon in the contract.
Tasks and Goals
Further, it is advisable to stipulate the actual goals and objectives of the object in question. So, the legislation in force on the territory of the Russian Federation today does not directly govern the concepts, forms, content and types of license agreements. However, they are subject to the provisions of the Civil Code of the Russian Federation. This is Chapter 9, entitled “Transactions” of Section III, referred to as “General Provisions of the Contract” and “General Provisions of Obligations”.
It is important to note that these types of license agreements are distinguished as bilateral and unilateral. In any case, their subject is the right to use intellectual property in a strictly established framework for a certain period of time and in a specific territory. It is necessary to add that one of the components of this paper is the elements of a contract of commercial importance. However, the fundamental difference between all types of license agreements is the intangible nature of the object of the transaction. In addition, the ownership of the intellectual product is reserved by the licensor (recipient of funds). So, it is advisable to make a conclusion about the possibility of "double" property. The transfer of the right to use intellectual work from the user directly to a third party is also possible. In this case, the conditions of sublicense (one of the types of registration of license agreements) must be observed. The possibility of transferring intellectual property rights must be agreed upon in the contract concluded with the copyright holder. The main task that deals in licensing deals is the desire to prevent violations of the established conditions in accordance with which the results of intellectual activity are applied.
Contract Objects
The concept, types and content of licensing agreements in one way or another imply the presence of intellectual property as a central figure. It is advisable to present the objects of intellectual labor:
- Artistic, scientific and literary works.
- TV shows.
- Sound recordings and videos.
- Stage activity.
- Service marks, trademarks, and commercial type designations.
- Inventions
- Geographical names.
- Samples used in industry.
- Breeds of animals and varieties of plants.
- Radio signals, microcircuits, domain names, databases and so on.
License agreement, its types and characteristics
Depending on the scope of rights that are granted to the receiving party, it is customary to classify agreements into the following groups:
- Nonexclusive. They provide for the transfer of the possibility of using intellectual property to one or a number of users. At the same time, similar powers are retained by the original copyright holder.
- Exceptional. This type of license agreement in patent law involves the transfer of all rights to one user. Moreover, the transferring party does not retain the corresponding rights.
The most important characteristic of a license agreement is the provision of the possibility of using only certain “items” of intellectual property separately. Upon receipt by the user of a whole complex of rights of an exceptional type (for example, on business or production technology, a company name, etc.), the parties enter into a commercial concession contract, the second name of which is franchising. If the right that is stipulated in any form of the license agreement ceases to apply, the agreement itself also terminates. In accordance with the terms of franchising in such a situation, only the provision relating to the completed law becomes powerless in legal terms. The contract itself does not lose relevance.
Form and structure of the contract
It is advisable to consider not only the types of license agreements. Their shape also plays a crucial role. So, the contact form may include the following sections:
- Preamble. These are the names of the parties and details. It is worth noting that the licensee agrees to clearly indicate its intention to buy a license in accordance with the agreed conditions. In addition, it is important to indicate that the licensee has the right to carry out a similar sale.
- Definition of concepts. In this section, you need to specify the type of transaction and all the conditions for applying the license, as well as determine what the object of intellectual property means in a particular situation.
- Subject. It stipulates the possibility of implementing such type of license agreements as sublicense.
- Enhancements. This section indicates the amount of improvements that can be made to the transaction object by the user.
- Responsibility of the parties and guarantees. It is worth noting that the user agrees to pay the license price established by the contract, and the copyright holder gives him guarantees in economic, legal and technical terms.
- Technical assistance. Here it is advisable to characterize the amount of assistance in studying the intellectual property that the licensee wants to receive and can give the licensor.
- Payments and taxes. The concept and types of license agreements in one way or another imply the fact of payments directly to the original copyright holder and, in the form of tax, to the relevant state structures.
- Confidentiality. This item is of particular importance in the case of know-how. The fact is that the disclosure of meaning leads to its absolute depreciation.
- Protection of transferred rights. It is worth knowing that the obligations related to protection lie fully with the licensee. However, the user must maximize the assistance of the opposite side.
- The resolution of emerging disputes. The types and terms of license agreements in one way or another suggest the possibility of disputes and discussions. So, the licensee and the licensor are obliged to resolve them in a timely manner, with interest and with maximum efficiency.
- Duration and termination of the contract.
- Signatures of the parties and legal addresses. This paragraph is final, it closes the document.
Terms of an agreement
Having fully considered the concept and types of licensing agreements, their characteristics, forms, objects, goals and objectives, it is advisable to go to the conditions. It is important to note that an agreement is considered concluded if its parties have reached a unified position regarding all issues that determine the nature of the agreement and are considered significant from the point of view of current legislation. To recognize the license agreement as valid, a number of conditions must be observed:
- The availability of the subject of the contract. In this case, they are entitled to the application of certain inventions, technologies, know-how and so on. In addition, it is necessary to characterize products that can be manufactured using this intellectual property.
- Availability of registration of an object of a license agreement (for example, a trademark). It should be noted that it must be confirmed by copies of the relevant certificates, supplementing the final contract. The text of the contract must indicate the numbers of these certificates.
- Type of license in the license agreement and scope of rights received by the receiving party. It should be noted that the boundaries of the use of the intellectual property by the user must be clearly defined. If the previous owner reserves the right to use intellectual property, it is indicated which part of the rights the licensee cannot receive.
- Quality assurance. The article should indicate that the quality of the product that the licensee provides is not inferior to the quality of the product that the licensor produces.
- Geography and period of validity. If there is no agreement between the parties regarding the territory and duration of the license, these parameters should be determined by the geography and period of validity of the patent.
- The amount of remuneration that is transferred by the licensee to the licensor. It is worth noting that by the time the contract is signed between the parties, consensus needs to be reached on this issue. A specific amount of cash can be determined by the parties to the transaction or set at the market value of such commodity products or services.
Conclusion of an agreement
In this chapter, we will consider the stages and features of such a procedure as the conclusion of a license contract. So, the first step is collecting the necessary documents (for example, preparing copies of certificates regarding the registration of trademarks). Further, all disputed issues arising between the parties are agreed upon, as a result of which the text of the contract is formed. The contract is signed by both the licensee and the licensor. At the next stage, the preparation and subsequent submission of the application for registration of the contract with Rospatent is implemented. It is worth noting that the statement is in free form. It is signed by the copyright holder and submits to the patent structure. It is necessary to supplement that along with the application, copies of the necessary documentation of an accompanying nature (for example, a copy of the certificate regarding the registration of a trademark), as well as a contract in triplicate and a paper confirming the payment of the state duty are transferred. It is important to keep in mind that the period for consideration of an application in Rospatent varies from a few days to two months from the date of submission of the documentation.
Geography and duration of the contract
It should be borne in mind that the duration of a transaction between the parties under no circumstances can exceed the duration of the intellectual property right (the result of intellectual work). Thus, the validity period of a utility model and a trademark is ten years, however, after this period there is an opportunity to prolong it. Regarding the invention, this period reaches twenty years, relative to the industrial design - does not exceed fifteen years (if necessary, it can be extended for ten years).
If the text of the contract does not indicate the specific term of the agreement, the contract is considered concluded for five years. It is worth noting that in the process of its preparation and further approval, it is necessary to note the geography of action. It cannot be wider than the territory in which the legal protection of intellectual property is implemented. In any case, the contract may allow the use of the facility throughout the territory of a country, in a particular region or city, even on a specific street and so on.
Cost issue
It is important to keep in mind that the price of the procedure for the formation and registration of an agreement includes several components. The main and most difficult amount of money is a fee to the licensor. It is worth noting that the amount of this payment can be determined by the profit from the license. It consists of a number of types of payments, among which the percentage (royalties), a fixed amount (lump sum) and other payments. The costs associated with the execution of the agreement include the following elements:
- National tax. You need to know that its dimensions are, for example, 13,500 rubles for a trademark, 1,600 rubles for an industrial design, invention or model, 11,500 rubles for each additional certificate, 850 rubles for each patent additionally.
- Lawyer services. It is important to keep in mind that their average cost varies from 10,000 to 15,000 for each of the following types of services: formation of an agreement of a typical or non-standard nature, verification of the submitted documentation for compliance with the provisions of the legislation in force in the country, preparation and further transmission of the application for registration agreement in Rospatent, the formation of an additional contract. It is worth knowing that the preparation and subsequent submission to the patent structure of an application for amending the current documentation or registering a patent agreement currently costs the customer approximately 5,000-10,000 rubles. The fee for each patent or trademark of an additional nature varies from 500 to 2500 rubles.
Conclusion
So, the conclusion of a license agreement today allows, in accordance with the current law, to transfer the right to use trademarks and other intellectual property to another person. At the same time, the possibilities that are provided to him, the compensation amount that the user must pay to the transferring party, the term and place of validity of this contract are specified.