The current legislation provides for special provisions governing the use of the results of intellectual work. To obtain the right to use this or that product, the interested person enters into a license agreement. The concept of this agreement, as well as the features of its design, we will consider further.
General information
A license agreement, a model of which will be described later, is an agreement that defines the conditions for providing the opportunity to use the results of intellectual work. The document is drawn up by the author of the corresponding product (copyright holder) and the user (licensee).
The interested party, under the terms of the license agreement, assumes the obligation to pay a fee for the rights granted to it, as well as perform other actions agreed upon by the parties to the transaction.
Agreement specifics
There are no specific provisions in the law governing the conclusion of a license agreement. However, the provisions of Ch. 9 sec. 3 on general provisions on obligations and contracts.
It must be said that a license agreement on the granting of the right to use the result of intellectual work can be either single or bilateral. The agreement contains elements of a trade agreement. But the object of the license contract is intangible.
The execution of the agreement does not deprive the owner of the product of intellectual labor of rights to it. Moreover, the licensing agreement provides for a kind of “dual ownership”.
Appointment
The named agreement is drawn up in order to prevent any violations in the field of intellectual property turnover. Products of intellectual labor are specific objects of turnover. Rights to them are subject to special protection. In this regard, the legislation provides for several articles regulating the procedure for their use. So, the license agreement is stated in Art. 1235 of the Civil Code of the Russian Federation.
Contract object
The products of intellectual labor in respect of which a license agreement is drawn up are:
- Works of literature, art, scientific works.
- Sound recordings, television / radio broadcasts, stage activities.
- Geographical Names.
- Industrial samples.
- Breeds of animals, varieties of plants.
- Databases, microcircuits, domain names.
- Trademarks, company names, service marks, commercial designations.
- Inventions
Classification
There are various types of license agreements. Classification can be built on various grounds. So, depending on the volume of legal opportunities provided to the user, the following agreements are distinguished:
- Nonexclusive. Such license agreements provide for the transfer of the right to use the result of intellectual work to one or more interested parties. At the same time, the primary owner retains all his powers and legal capabilities.
- Exceptional. In accordance with the terms of such agreements, the rights are transferred to the licensee (user) without saving them for the primary owner.
In world practice, other types of license agreements are also used:
- Single (sole). Under such agreements, the user is guaranteed that the copyright holder does not provide a license to third parties in the territory agreed by the parties. At the same time, the licensor (owner of intellectual property) reserves the right to use the product in the area within which the contract is valid.
- Complete. According to their conditions, the entire amount of rights passes to the user.
By their purpose, license agreements are divided into agreements either on production or on sale or on the simultaneous production and sale of intellectual property.
The literature also refers to open and compulsory licenses. When separating them, not the specifics of the agreements themselves are used, but the specifics of their conclusion.
The meaning of the open contract is that the copyright holder declares his desire to transfer to any interested subject the right to use the product of intellectual labor under the terms of a non-exclusive license. He submits the appropriate application to the authorized body (patent body). She, in turn, publishes the proposal in the official publication.
The criterion for distinguishing between a coercive agreement and a usual one is the nature of the will of the participants in the transaction. The meaning of such an agreement is that under certain circumstances, any interested entity may submit to the patent holder a requirement to conclude an agreement with him.
Forced licenses are used as an anti-blocking tool used by some copyright holders to eliminate competitors. The circumstances in the presence of which the interested entity is entitled to demand the provision of a compulsory license are the non-use or inefficient use of the facility, including during the period established by law.
According to the method of protection of products of intellectual labor, license agreements are divided into patent and non-patent:
- The first include agreements whereby rights to objects protected by the rule of law are transferred to licensees. Such license agreements for trademarks, inventions, utility models, breeding developments, industrial designs, topologies of integrated circuits are drawn up.
- Under the terms of patent-free agreements, rights are transferred to know-how, including to unprotected technical solutions, production secrets, commercial, technical, industrial and economic developments, experience, knowledge.
There is also a classification of agreements depending on the status and relations of participants. On these grounds, license agreements are singled out, drawn up:
- between financially and legally independent entities (such agreements are also called intercompany);
- between related companies (they are called intra-company).
Nuances
The peculiarity of the license is that under its conditions it is possible to use only certain products of intellectual labor. If a complex of exclusive rights is transferred to the subject (for example, for a company name, doing business, technology, etc.), the parties draw up an agreement on commercial concession. It is also called franchising.
If the right under the license agreement is terminated, then he himself shall be canceled. As for franchising, only the position that concerns the terminated right will lose force. Moreover, the agreement itself will not lose its force.
License agreement: sample
According to general rules, an agreement is considered concluded if it stipulates all the essential conditions. It is also important to remember that for the validity of the transaction a written contract is required. The agreement may include the following sections:
- Preamble. The names of persons are given in this part. The licensee must clearly articulate a desire to obtain rights on the terms agreed by the parties. In addition, you should indicate the eligibility of the copyright holder to complete the transaction.
- Definition of concepts. This section indicates the type of transaction, the conditions of use of the object, reveals the concept of the product of intellectual labor.
- Subject of the transaction. User rights information is provided here. Parties may stipulate the possibility of sublicensing.
- Responsibilities and rights.
- Responsibility. In this part of the contract form, it is necessary to clearly indicate the violations that may be committed by the parties to the transaction, and how to prevent them. The liability of the parties is established in accordance with the provisions of civil law.
- Guarantees. The user under the terms of the transaction is obliged to pay the agreed cost of the license, and the copyright holder must provide him with the relevant rights, economic, legal and technical guarantees.
- Confidentiality. The provisions on keeping information secret are especially relevant in the case of know-how, since disclosure of information will lead to its depreciation.
- Settlement of disputes. As a rule, the parties provide for the possibility of pre-trial settlement of conflicts. However, it is necessary to prescribe the conditions under which a particular participant can apply to the court.
In conclusion, the parties indicate their legal address, other details and signatures.
Features of the content of the agreement
A license agreement is deemed concluded if the participants agree on all the conditions governing the nature of the transaction. For an agreement to be considered valid, it must contain the following information:
- About the subject. It is the direct right to use the object of intellectual activity - technology, invention, know-how, etc. In addition, it is advisable to give the characteristics of products that can be manufactured using the result of mental work.
- On state registration of a trademark (if it acts as the subject of a transaction). Registration must be confirmed by copies of certificates attached to the agreement. The text of the contract indicates the details of the documents.
- On the scope of rights passing to the user, type of license. The contract should clearly indicate the limits of the legal capabilities of the licensee. If the parties agreed to retain part of the rights of the owner of intellectual property, then this should be indicated in the text.
- About guarantees. In the agreement, the parties should state that the quality of the product manufactured by the user of the license and the product issued by the owner of the intellectual property will be the same.
- On the time and territory of the contract. If the parties do not indicate the specific locality on which the agreement is valid, as well as the period, they will be determined by the geography and term of the patent.
- About the amount of remuneration to the owner of intellectual property. At the time of signing the contract, the parties must agree on the terms, amount and payment procedure. The amount of remuneration is determined by the parties to the transaction, taking into account the prices in force at the time the agreement was drawn up in a particular area.
The essence of the obligations of the copyright holder
The parties to the license agreement are the licensor (holder of the exclusive right to use the product of intellectual labor) and the licensee (entity interested in obtaining the legal opportunity to use the same object). The obligations of the parties follow from this.
The licensor must provide the licensee with the right to use the object of intellectual activity to the extent specified in the agreement. Meanwhile, this obligation is not limited only to a formal indication of the transfer of certain legal capabilities. The licensor needs to ensure their implementation by the licensee. This rule is considered general. It is specified depending on the characteristics of the transaction object.
If an entity receives a license to use legally protected technical solutions (utility models, inventions, etc.) so that an interested entity can exercise their rights, they must obtain documentation from the licensor that discloses the contents of the product in more detail than a patent.
If the subject is secret technology, the ability of the licensee to use the right transferred to him will depend not only on the availability of the necessary papers, but also on the assistance of the licensor in its development.
User Responsibilities
Under the terms of a reimbursable contract, the licensee must timely and fully pay a fee for the right granted to him. In practice, several types of payment are used:
- Lump-sum payment (in a fixed amount). In this case, the parties pre-calculate the size of the remuneration, which is paid in installments or at a time.
- Royalty (periodic deductions). In this case, the amount of remuneration is determined by the formula and paid at regular intervals.
- Combined payment. In such a situation, part of the funds is paid at a time, and the remainder is divided into periodic payments.
Royalty is considered the most common way. As a base for accrual, participants can use the amount of manufactured goods, user profits, the selling price of products, etc.
The licensor may assign different obligations to the licensee: use the object of the transaction for its intended purpose, carry out its improvement, not contest the patent, notify of cases of violation of exclusive rights, maintain data confidentiality, etc.
Features of the registration procedure
Before signing the license agreement, the parties must collect the necessary documents. The licensor should prepare copies of certificates and other papers related to the subject of the transaction.
At the next stage, the participants meet and discuss the essential terms of the agreement. After approval, the text of the contract is drawn up. After that, the parties carefully read it again and, if there are no complaints, sign it.
At the next stage, an application for registration of a license agreement is prepared. It is compiled in free form and filed with the patent office. It must be said that the registration of the agreement is carried out in the case when the intellectual property or means of individualization is also subject to registration. Failure to comply with these requirements entails the invalidity of the contract.
Required documents
The following shall be filed with the patent authority:
- Application for state registration of the contract.
- Two copies of the agreement with one copy.
- Duty receipt.
A statement can be made and signed by any participant in the transaction.
Agreement costs
The costs of the parties consist of certain components:
- State duties. The amount of payment depends on the object of the transaction. For example, 13.5 thousand rubles will have to be paid for the transfer of trademark rights, and 11.5 thousand rubles for each additional copy of the certificate.
- Legal services. Quite often, participants in a transaction turn to professional lawyers. They help with the preparation of the contract, verification of documents for compliance with current legislation, prepare and transfer papers to Rospatent, etc.
In addition, the licensee will deduct fees to the licensor.
The timing
The validity period of the agreement may not exceed the period during which the right to the object of intellectual work is valid. For example, for a trademark and utility model, the term is 10 years. However, the law allows for the extension of this period. The validity period of the rights to an invention is 20 years, and to an industrial design - 15. If a specific period is not specified in the contract, then it is considered that it is concluded for 5 years.