IP owners are free to exploit their rights in different forms, including by entering into licence agreements. Licence agreements are regulated by the Russian Civil Code. Under a licence agreement, one party—the owner—grants or undertakes to grant the other party (licensee) with the right to use the trademark/patent within the limits stipulated by the contract.
Form and requirements
To be valid the licence agreement must be registered with Rospatent, the Russian governmental agency in charge of intellectual property. No due date for licence agreement registration is set. However, failing to register a licence will result in the licence not being considered as being in force. The licensor will not be able to collect royalties if the licence is invalid or expired. On the other hand, using the registered IP without a valid licence granted by the owner of the IP right constitutes an infringement.
The agreement must be made in writing and translated into Russian. Bilingual agreements are also subjects for registration and can be used as an option. The English and Russian versions must completely correspond to each other.
The subject of the licence agreement can be only registered right, ie, pending trademark national trademark applications, pending international trademarks or pending patent applications cannot be a subject for the agreement.
Rospatent accepts the following documents for the licence agreement:
- A licence agreement signed by the parties.
- A notarised extract from the original agreement.
- A notice signed by the parties to the contract about the disposal of the exclusive right.
Usually, the owners are reluctant to submit the full agreement as it contains confidential information. In these cases, it is possible to submit an extract or a notice.
The recordal process takes about two months. With the written consent of the licensor, the licensee may, by agreement, grant the right to use the result of the intellectual activity or means of individualisation to another person (a sub-licence agreement). The same rules apply to the sub-licence agreements as to the licence agreement, ie, it must be submitted in written form and registered at Rospatent.
“The licensee may, by agreement, grant the right to use the result of the intellectual activity or means of individualisation to another person.”
Annikki Hämäläinen
Erik Viik
Terms of the agreement
The parties of licence agreements are free to set terms of the agreements. However, there are minimum requirements that the licence agreement must include by law:
- Parties of the agreement: Rospatent has very a strict approach to this and it is important to make sure that the parties are indicated correctly to avoid any additional inquiries.
- The subject of the agreement must give a clear indication of the registration numbers, goods and services.
- The agreement must indicate the territory on which it is valid. In case the territory is not indicated the licensee has the right to use the IP object on the territory of the whole Russian Federation.
- The term of the agreement must be specified. It cannot be longer than the term of the validity of the IP. In case the term is not indicated, the licence agreement is valid for five years. The expiration or revocation of the patent, or early termination of the right to a trademark leads to automatic termination of the corresponding licence agreement.
- Compensation terms (licence entrance fee, lump sums and royalties).
- For patent licences, it is important to specify the ways the patented invention/trademark will be used in relation to the granted licence. The licensee is allowed to use the licensed patent only within the terms specified by the licensor.
- Any clauses regarding possible sub-licence agreements.
- Type of licence: licence agreements can be exclusive or non-exclusive. Unless it is provided otherwise, the licence is regarded as non-exclusive, which means that the owner of the IP object can grant licences to several licensees. It must also say if the licence agreement can be unilaterally cancelled.
Licence agreements concerning granted Eurasian patents need to be registered separately with the national patent offices of the member states of the Eurasian Patent Convention.
The corresponding Eurasian patent must be in force in the member state where the licence is to be registered. Formal requirements and the registration process depend on the national legislation of the member state.
Annikki Hämäläinen is a trademark attorney and partner at Papula-Nevinpat. She can be contacted at: annikki.hamalainen@papula-nevinpat
Erik Viik is a patent attorney and partner at Papula-Nevinpat. He can be contacted at: erik.viik@papula-nevinpat.com
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