Pledge of Intellectual Property Rights
Among the recent innovations in intellectual property law, it is worth noting the introduction of a new method of disposing of rights into Articles 1232 and 1233 of the Civil Code — the pledge of intellectual property.
SUBMIT AN APPLICATION
A pledge, classified by law as a “method of securing obligations”, is intended to provide the creditor with an additional guarantee of their rights and legitimate interests, as its purpose is that the creditor (pledgee) has the right, in case of default by the debtor on the principal obligation, to obtain satisfaction from the value of the pledged property.
“Intellectual property rights” are a special category of property
There are several important peculiarities when establishing, exercising, and terminating pledge legal relations involving intellectual property rights:
Intellectual property rights may be the subject of a pledge only if the law permits their alienation or foreclosure/enforcement against them (for example, the following cannot be alienated and, consequently, cannot be pledged: moral (personal non-property) rights of authors and other right holders, exclusive rights to a commercial name, appellation of origin, the economic “resale royalty right” (droit de suite); furthermore, foreclosure cannot be levied upon a performer's exclusive right to their performance or an exclusive right to a secret invention, making their full pledge legally unfeasible (although the Administrative Regulations of Rospatent do not exclude this with respect to secret inventions));
In statutory cases, an agreement on the pledge of exclusive rights is subject to mandatory state registration and is void without it (this applies to the pledge of exclusive rights to inventions, utility models, industrial designs, and trademarks); when foreclosing on such assets, the involvement of the relevant state authority — primarily Rospatent — is also required to record the transfer of rights to the new right holder (creditor);
The subject matter of an exclusive right pledge agreement must include an explicit reference to the relevant intellectual property subject matter, and in certain cases, also the number and issue date of the title document (patent, certificate);
The agreement may provide for both the pledge of the exclusive right as a whole and the pledge of the right to use the intellectual property subject matter (in the latter case, statutory requirements for drafting license agreements must be complied with);
The statutory provisions on the pledge of an exclusive right allow the pledgor to freely use and dispose of the subject of the pledge without the pledgee's consent, unless otherwise agreed by the parties (the general rule of Part I of the Civil Code stipulates the opposite).
When acquiring rights to any intellectual property asset, it is necessary to verify whether the asset is encumbered by a pledge.
Conclusion on the pledge agreement
An intellectual property pledge agreement entails numerous specific legal aspects that must be considered when executing a transaction.