Intellectual property

Licence agreement

General

A licence agreement grants the right to use intellectual property rights within the limits set out in the agreement.

Under the Civil Code, licence agreements must set out the following information:

• the licensed object;
• the duration of the licence;
• the territories for which the licence is granted;
• the manner in which the licensed object may be used; and
• the amount of remuneration (i.e. the royalty payments) or its method of assessment.

The licence may be granted on an exclusive or on a non-exclusive basis. By granting an exclusive licence, the licensor is not only unable to issue subsequent licences to others, but is also prohibited from itself using the rights transferred under such licence, unless otherwise agreed by the parties. If the licensee is entitled to issue sublicences, this must be expressly provided for in the agreement.

Licences are deemed to be granted for consideration, even if the licence agreement is silent on remuneration. The agreement may fix the amount of remuneration (royalty payments), or set out a method to determine it. Remuneration may take the form of a lump-sum fixed in advance and delivered as a single payment, periodical royalties, or as a percentage of revenues.

Commercial entities are prohibited from entering into exclusive licence agreements worldwide and for the whole term of the respective intellectual property protection on a free-of-charge basis.

Shrink-wrap licences

Shrink-wrap licences for software and databases are where the conditions of the licence are provided for on the plastic wrapping of the CD or in electronic form, and the first use of the software or database by the consumer means they agree to adhere to the conditions of the licence. The Civil Code permits the use of shrink-wrap licences for software and databases which may be granted to each user.

Open licences

The legal concept of an open licence to use works of science, literature or art exists in Russian law. In essence, this type of licence is deemed to be a contract of adhesion. Therefore, the law requires the terms and conditions to be freely accessible to anyone who wishes to review them.

Licence conditions must contain the scope of the use of the work. Unless otherwise stated in the licence conditions, licences will be granted free-of-charge and be valid throughout the world for five years (if the open licence is for computer programmes and databases, this will be for the duration of the exclusive rights).

Assignment of exclusive rights

According to the Civil Code, this contract involves transferring the full and exclusive rights and title to an object of intellectual property rights for the entire period during which these rights are protected. Notably, free-of-charge assignment agreements between commercial entities are expressly prohibited (unless otherwise regulated by the Civil Code).

State registration of contracts

If a trademark, software, database, invention, utility model or design is registered with Rospatent, then any licence, assignment contracts or pledge contracts (as expressly provided for by the Civil Code) also require registration with Rospatent in order for the contract to be valid for third parties.