IP rights assignment, license and franchise agreements Flashcards
Assignment agreements
According to the Civil Code, the assignment of proprietary (exclusive) rights is assumed to be in full for the entire period during which these rights are protected within the whole territory of rights protection. If an assignment agreement contains any limitations (limitation of territory, term, methods of use, etc.) it would be deemed a license (or can be deemed void if it does not fit the requirements of a license agreement).
Assignment agreements must be made in writing. The non-observance of the written form causes the invalidity of assignment.
An assignment agreement must provide for the assignment’s remuneration or the procedure for its determining, or expressly provide that it is free of charge. Otherwise, the assignment agreement is deemed non-concluded. The Civil Code expressly prohibits free-of-charge assignment agreements between commercial entities.
Unless otherwise stipulated in the agreement, the assignment of rights
takes place from the moment of the agreement’s execution. This rule
does not apply when the registered IP objects are assigned (including
voluntarily registered software); the assignment of rights to such objects
takes place only at the moment of its state registration of such
assignment by Rospatent. However, even in the absence of the said
registration with Rospatent, the terms and conditions of the assignment
agreement are valid between the parties as of the agreement’s
execution
To be assumed to be
Предполагается, что будет
Assignment agreements must be made in writing
Договор об отчуждении должен быть сделан в письменной форме
The non-observance of the written form causes the invalidity of assignment
Неблюдение письменной формы приводит к недействительности назначения
An assignment agreement must provide for the assignment’s remuneration or the procedure for its determining, or expressly provide that it is free of charge
Соглашение об отчуждении должно предусматривать вознаграждение за отчуждение или процедуру его определения или прямо предусматривать, что оно является безвозмездным
Otherwise, the assignment agreement is deemed non-concluded
В противном случае соглашение об отчуждении считается незаключенным
The Civil Code expressly prohibits free-of- charge assignment agreements between commercial entities
Гражданский кодекс прямо запрещает безвозмездные соглашения об отчуждении между коммерческими организациями
Unless otherwise stipulated in the agreement
Если иное не оговорено соглашением
assignment of rights takes place from the moment of the agreement’s execution
Отчуждение прав происходит с момента заключения соглашения
License and franchise agreements
Generally, the right to use IP in Russia may be granted in the form of a license agreement made in writing.
Rights to trademarks, patents, copyrights, trade names and know-how may also be granted under a franchise agreement. Such agreement must provide for a license to a trademark and, at least, any other IP object from the above list.
Unless otherwise provided by the Civil Code, license/franchise agreements must be made in writing. The non-observance of the written form causes the invalidity of the grant of rights. Some software and copyright licenses are excluded from this rule.
A license agreement should provide the terms concerning the fee amount/royalty or the procedure for determining it, or expressly provide that it is free of charge. Otherwise, the license agreement is held to be non-concluded.
The Civil Code expressly prohibits free-of-charge exclusive licenses for the whole term of rights within the whole territory of its validity between commercial entities.
From 27 May 2022, there are some limitations for payments under IP license agreements which were imposed by Presidential Decree No. 322 (the “Decree”). The Decree applies to payments for using IP that are payable to the right owners from so called unfriendly jurisdictions or right holders taking so called unfriendly actions against Russia. For details of these limitations, please refer to Section 8 (“Sanctions”)
Rights to trademarks, patents, copyrights, trade names and know-how may be granted under a franchise agreement
Права на ТЗ, патенты, авторские права, коммерческие обозначения и ноу-хау могут быть переданы по договору франшизы (коммерческой концессии)
the license agreement is held to be non-concluded
Лицензионное соглашение не является заключенным
What documents are necessary for the registration of rights assignment/license?
The grant/assignment of rights to registered patents or trademarks is subject to mandatory state registration with Rospatent. Without such registration with Rospatent, the license/franchise/assignment would be deemed not to have taken place.
The grant/assignment of rights can be registered based on the following:
• original agreement
• notification executed by both parties
• notarized statement from the agreement
The notification or statement from the agreement must contain the essential terms of the relevant agreement. Alternatively, to register the grant of rights to use IP under a license/franchise, the parties can file a notarized statement from the relevant agreement or the agreement in its entirety with Rospatent.
Non-Russian law may govern license and franchise agreements between an international licensor/franchisor and a Russian licensee/franchisee. However, certain mandatory Russian law provisions and requirements would be applicable to license and franchise agreements irrespective of the parties’ choice of law. For instance, a license/franchise agreement must provide a detailed description of the licensed IP (e.g., registration numbers of the licensed trademarks) and specify the scope of rights granted to a licensee. From a Russian law perspective, the right to use IP that is not specifically provided in a license agreement is considered as not granted.
Under Russian law, a franchisor is subsidiarily or even jointly and severally liable with a franchisee with regard to claims brought against the franchisee in respect of the quality of the franchised goods and/or services. The scope of such liability differs depending on whether the franchisee manufactures those goods in connection with which a claim is brought under the franchise agreement. For a trademark license, a trademark licensor would be jointly and severally liable with a licensee in connection with claims brought against the licensee in connection with its manufacture of goods and rendering of services under the licensed trademark
From a Russian law perspective
С точки зрения российского права
rendering of services
Оказание услуг
