A license should be understood as a special permit to carry out certain actions. It is certified by the same document. Different types of license agreements are distinguished depending on the volume of legal opportunities. Samples and features of some of them will be considered in the article.
General classification
The legislation provides for:
- Exclusive License. Under the terms of such an agreement, an interested person is granted the right to use the object while retaining the possibility of partial use by the licensor (owner) of it. Permission in this case may be issued to only one subject.
- Non-exclusive license. This permission allows a person to use the object while retaining all legal rights of the owner. The licensor may grant use rights to an unlimited number of entities.
Alternative classification
In world practice, the terms “exclusive” or “non-exclusive license” are not usually used. These terms are replaced by other, more precise:
- Sole (single) license. Under such an agreement, the licensee receives guarantees that the licensor will not issue permission to third parties in the agreed territory. However, the owner retains the right to use the object.
- A full license is a non-exclusive agreement which provides for the transfer by the licensor of all rights.
Appointment
There is a classification of licenses and on this basis. Permits may be granted for the sale or manufacture of certain products. There are also comprehensive licenses. Based on them, the licensee carries out both production and marketing.
Features of the contract execution procedure
For this criterion distinguish compulsory and open licenses. In the latter case, the patent holder must submit an application to the authorized body, which, in turn, publishes it in its official source. The bottom line is that the owner declares his desire to transfer the license for the right to non-exclusive use of the product of intellectual labor to any contacting entity.
Compulsory permission differs from the usual one in the nature of the will of the participants in the transaction. Its essence is that upon the occurrence of certain conditions, any interested subject has the right to require the patent holder to conclude an agreement. Forced licenses are used as one of the tools to combat blocking in a competitive environment.
Such an agreement is concluded if the object of intellectual work is not used or is not being used effectively enough or the period of inaction exceeds the period established by law.
Explanations
An exclusive license to use a trademark (other means of individualization) or a product of intellectual activity should be distinguished from property rights to tangible objects in which they are expressed.
In accordance with a simple permit, the licensee can use the result of mental work, but the owner retains his legal capabilities. Therefore, under a non-exclusive license agreement, the patent holder may use the object on equal terms with the licensor and other entities that may obtain rights in the future.
The exclusivity of the agreement implies a certain limitation of the legal possibilities of the owner.
Features of an open license
They are fixed in article 1286.1 of the Civil Code.
The legislation provides for a simplified procedure for concluding an agreement on the provision of a non-exclusive license. In this case, all conditions should be accessible to an indefinite number of subjects and placed so that interested parties have the opportunity to familiarize themselves with them before using the product of intellectual work.
An open contract may contain indications of actions upon completion of which the proposal is recognized as accepted. In this case, the written agreement is considered to be complied with.
Subject
It is the right to use a work of art, science, literature within the limits established by the contract. The patent holder may provide the interested person with the right to use to create a new product of intellectual work.
A non-exclusive (simple) license is considered to be gratuitous, unless otherwise specified by its conditions.
Nuances
If the validity period of the license is not established, then with respect to software and databases the agreement is recognized as drawn up for the entire period of existence of the exclusive right. For other objects, the contract is considered executed for 5 years.
If the license does not specify the territory within which the use of the work is allowed, then it is permitted throughout the world.
Termination of agreement
A patent holder who granted a license in a simplified manner may partially / completely refuse to fulfill the contract unilaterally if the licensee transfers the rights to use the work outside the established conditions.
The author may demand the application of measures to the violator, in accordance with article 1252 of the Civil Code.
Sample License Agreement
The essential terms of the agreement are defined in article 1235 of the Civil Code. In accordance with the norm, under the contract, one participant - the owner of the exclusive rights to the work - grants or accepts the obligation to transfer to another subject - the licensee - the opportunity to use this object to the extent agreed upon by the parties.
The actions of the interested party should not go beyond the terms of the agreement. Rights not specified in the document are considered not granted to the licensee.
The agreement must contain the following conditions:
- A description of the territory within which the licensee can use the work. If it is not indicated, the subject has the right to use the product throughout the Russian Federation.
- Duration of license. It should not exceed the period of existence of the exclusive right to a work. If the agreement does not contain an indication of the term, the contract is considered valid for 5 years, unless otherwise specified by the rules of the Civil Code.
- Terms and conditions of payment of remuneration. In accordance with the contract, the licensee assumes the obligation to pay the patent holder the amount agreed by them. If the agreement does not contain a condition on the paid use of the work or on the rules for determining remuneration, the transaction shall be deemed not concluded.
- Subject of the contract. The agreement must indicate the specific product of intellectual work or means of individualization, the possibility of using which is transferred to the licensee. If necessary, the details of the document confirming the exclusive right to the object (certificate or patent) are indicated.
- Ways to use the subject of the transaction.
Features of determining conditions for remuneration
In the absence of a clause on the amount or rules for calculating the amounts paid to the patent holder, the procedure provided for in paragraph 3 of paragraph 424 of the Civil Code does not apply.
The remuneration may be paid in the form of a fixed one-time payment or periodic deductions, interest on revenue, or in another form.
Granting the right to use the means of individualization or other products of intellectual labor between commercial entities in the world and during the entire period of the exclusive rights is not allowed, unless otherwise provided in the Code.
Additionally
The license agreement must be executed in writing, unless otherwise provided in the Civil Code. Failure to comply with the established form entails the recognition of the agreement as invalid.
The fact of granting rights to use the result of intellectual work or means of individualization should be recorded in cases and according to the rules established in article 1232 of the Code.
The transfer of exclusive rights to the object to the new copyright holder is not considered grounds for termination or amendment of the contract drawn up by the previous licensor.
Finally
Some lawyers draw attention to the fact that only the obligation of the copyright holder to not grant permission to other persons follows from the wording of the exclusive license enshrined in law. The definition, however, does not say anything about the actions of the licensor related to the implementation and protection of the right by himself. It seems that, not being able to transfer it to other persons, with the exception of the licensee, the patent holder can use his exclusive right and protect it.
Meanwhile, according to some experts, such an understanding of legislative provisions contradicts the interpretation accepted in international practice. According to him, an exclusive license implies an exclusion right applicable to any entity. It is based on the exclusive use of the product of intellectual labor by the licensee. Given this, experts believe that when concluding a license agreement, the parties need to further determine the nature of the transferred right. It is advisable for the participants to specifically establish which - exclusive or non-exclusive - legal opportunity is provided.