Alienation of Intellectual Property Rights
Our specialists will help prepare an alienation agreement for rights to inventions, industrial designs, utility models, copyright items, as well as trademarks and commercial designations, tailored to your interests.
If the transfer of the exclusive right under an agreement on the alienation of the exclusive right is subject to state registration, our specialists will prepare all necessary documents for registration and provide full support before Rospatent.
It contains:
- a clear specification of the subject matter of the agreement (the exclusive right object, state registration number — if any);
- an indication that the agreement is gratuitous, or if it is for consideration: the amount of remuneration and the method for determining it.
In this regard, it must be taken into account that gratuitous alienation of exclusive rights between commercial organizations is not permitted (Clause 4, Article 1234 of the Civil Code of the Russian Federation).
Mandatory registration is required if the subject matter of the agreement is:
- a patented invention, utility model, industrial design;
- a registered trademark;
- a registered integrated circuit topography;
- a registered computer program, database.
The current regulations governing the registration procedure are:
- Civil Code of the Russian Federation, Article 1232
- Administrative Regulations of the Federal Service for Intellectual Property on the Provision of Public Services for State Registration of Disposal Under an Agreement of Exclusive Rights to an Invention, Utility Model, Industrial Design, Trademark, Service Mark, Registered Integrated Circuit Layout Design, Computer Program, Database
- Rules for the State Registration of the Disposal of Exclusive Rights to an Invention, Utility Model, Industrial Design, Trademark, Service Mark, Registered Integrated Circuit Layout Design, Computer Program, Database Under an Agreement, and the Transfer of Exclusive Rights to the Specified Results of Intellectual Activity Without an Agreement
If the application is filed by only one party, one of the following documents must be attached at the applicant's choice:
- a notification of the disposal of the exclusive right signed by both parties;
- a notarized extract from the agreement;
- the agreement itself.
The registration authority (Rospatent) verifies that the following information specified in the submitted documents is consistent with the State Registers:
- information about the parties to the agreement;
- information about the subject matter of the agreement.
Therefore, if the right holder's name or address has changed, the corresponding changes must first be entered in the State Registers.
- failure to respond to a Rospatent notice within the established time limit;
- non-compliance with the state registration terms provided for in Clause 3 of the Rospatent Rules.
In practice, the current registration period takes about 2–3 months.
In the event that the transfer of exclusive rights under an alienation agreement is not subject to mandatory state registration (e.g., an assignment agreement for copyright), the agreement enters into force upon its execution.
If the transfer of exclusive rights under an alienation agreement is subject to state registration (e.g., an assignment agreement for trademark rights), the exclusive right is transferred to the acquirer at the time of state registration of the transfer of exclusive rights under the agreement.
At the same time, if an agreement on the alienation of an exclusive right encumbered with a license is executed, the licensee's consent is not required. Pursuant to Clause 7 of Article 1235, the transfer of the exclusive right does not constitute grounds for modifying or terminating the license agreement concluded by the previous right holder. However, the right holder must notify the licensee of the alienation of the right.
If, however, the right holder concludes an alienation agreement for an object encumbered with a pledge of the exclusive right without the pledgee's consent, the alienation agreement must be declared invalid pursuant to Article 168 of the Civil Code of the Russian Federation, and the consequences of contract invalidity shall apply to it.