Under the assignment of an exclusive right (Art. 1234 Civil Code of the Russian Federation, one party (the right holder) shall transfer or shall undertake the commitment to assign the exclusive right belonging to him to a result of intellectual activity or means of individualization in full scope to the other party (the recipient).
The contract for the assignment of an exclusive right shall be concluded in written form and shall be subject to official registration in the cases provided for by Paragraph 2 of Article 1232 of the Code. Failure to conclude the contract in written form or to meet the requirement of official registration shall entail the invalidity of the contract.
Under the contract for the assignment of the exclusive right, the recipient shall be committed to paying the right holder the remuneration provided for by the contract unless the contract provides otherwise.
Use the law to avoid doubt (and financial loss!)
One thing in which the law and business are in complete agreement is their aversion to uncertainty. With uncertainty comes dispute and in many unfortunate cases, unfairness and great loss. Just as you would with any bricks and mortar you might wish to purchase, so with Intellectual property do you want to ensure certainty of ownership. There is no value to ‘buying’ a property, only to find out at a later and much more critical point, that you have not really bought the property at all. You would never attempt to complete such a transaction without the assistance of legal experts and the same rules apply for Intellectual property.
Don’t underestimate the value of IP
In many cases today, especially regarding technology-based companies, the value of the company is dependent on its intellectual property above all else. There are several instances when the ownership and rights to this IP might want to be legally established or transferred from one party to another. This could be a potential million or even billion-dollar idea. In this situation, you do not want to leave anything to chance. At Zhuravlev&Partners we are perfectly able to eliminate that risk by drafting such binding legal agreements.
Maybe you are buying a company or just their intellectual property. Maybe you have employed many ‘tech’ experts and want to be certain that any intellectual property they create during their employment is vested with you the company, and not them the individual.
What are you trying to achieve? Are you confident?
Or maybe you are an investor, or you are a company owner seeking investment, and you want to give certainty that the intellectual property to which the investment will be based upon resides firmly and legally with the company to which the investment will be given.These are all very real everyday occurrences in the world of business, but they have potentially huge ramifications to the value and success of any company which engages in Intellectual property ownership. If you are in such a position, it is vitally important that you engage experienced legal advisors to ensure your rights are protected.
Assignment agreements such as these can be binding on historical patents, trademarks and copyrights, but can also be crafted to ensure that any future Intellectual property is, upon creation, immediately vested to the correct legal entity. They must be drawn up in written form and must be registered with Rospatent.
Act in haste, repent at leisure
Due diligence is very important, if the intended intellectual property is not already legally owned or registered to the anticipated party, this will defeat any agreement you might have made or intend to make. This could save you much embarrassment and cost.
Is there any consideration for the rights or ownership? If so, has a value been stipulated?
Will transfer of rights cause confusion to consumers? Namely, if similar rights exist, they cannot be separated, either transferred together or not at all.
The examples illustrate that there are many intricacies and pitfalls which must be observed regarding assignment agreements of intellectual property. Where such valuable rights are concerned you must seek expert and experienced representation. Zhuravlev&Partners are waiting to assist.
- Consulting on all issues related to the assignment of the exclusive rights;
- Drafting of a written contract for the assignment of the exclusive right, with its further approval by the client and by the Russian Patent Office expert;
- Preparing and filing of the necessary documents for the assignment of the exclusive right.