Disposal of the exclusive rights of a liquidated legal entity in favor of its participants

Article 61 of the Civil Code of the Russian Federation establishes the general provisions of the final stage of a legal entity – its liquidation. Thus, according to paragraphs 2 and 3 of this article, a legal entity is liquidated either by decision of its founders (participants) or a body of the legal entity authorized by the constituent document, or by a court decision. The reasons for both cases are also listed in this article, but this list is not exhaustive. At the same time, it is not enough to make a decision to liquidate a legal entity; it is also necessary to carry out the liquidation procedure established by law.

Paragraph 1 of Article 61 of the Civil Code of the Russian Federation establishes the consequences of the liquidation of a legal entity, which entails its termination without transfer in the order of universal succession of its rights and obligations to other persons. Despite the fact that universal succession does not occur during the liquidation of a legal entity, which is typical for the reorganization procedure of a legal entity, nevertheless, upon termination of the activities of a legal entity, singular succession is possible, in which only part of the rights and obligations are transferred, for example, in favor of creditors or its participants. In the latter case, some questions may arise, including those related to the transfer of exclusive rights to intellectual property, which require a number of clarifications.

In accordance with paragraph 8 of Article 63 of the Civil Code of the Russian Federation, “the property of a legal entity remaining after satisfaction of the creditors’ claims is transferred to its founders (participants) who have proprietary rights to this property or corporate rights in relation to the legal entity, unless otherwise provided by law, other legal acts or constituent document of a legal entity."

A similar provision is enshrined in the special law on limited liability companies, namely in Article 58 of the Federal Law of 02/08/1998 No. 14-FZ “On Limited Liability Companies”.

By virtue of Article 1226 of the Civil Code of the Russian Federation, “intellectual rights are recognized for the results of intellectual activity and means of individualization equated to them (results of intellectual activity and means of individualization), which include an exclusive right, which is a property right, and in cases provided for by this Code, also personal non-property rights and other rights (right of succession, right of access and others).

Since exclusive rights by their nature are property rights, they can also be transferred to participants in a legal entity on the basis of paragraph 8 of Article 63 of the Civil Code of the Russian Federation (resolution of the Presidium of the Intellectual Rights Court dated January 31, 2020 in case No. SIP -476/2019, decision of the Intellectual Rights Court dated December 30, 2013 in case No. SIP-270/2013).

If a legal entity is the copyright holder of intellectual property, it can dispose of the exclusive right belonging to it, in any way that does not contradict the law and the essence of such an exclusive right, including by alienating it under an agreement to another person, by virtue of paragraph 1 of Article 1233 of the Civil Code of the Russian Federation.

In addition to the disposal of an exclusive right under a contract, civil legislation establishes the possibility of transferring an exclusive right to another person without concluding an agreement with the copyright holder in cases and on the grounds established by law, including in the order of universal succession (inheritance, reorganization of a legal entity) and when applying for foreclosure ownership of the property of the copyright holder (Article 1241 of the Civil Code of the Russian Federation).

The provisions of paragraph 2 of Article 1232 of the Civil Code of the Russian Federation stipulate that “in cases where the result of intellectual activity or a means of individualization is subject to state registration in accordance with this Code, the alienation of the exclusive right to such a result or to such a means under an agreement, the pledge of this right and the granting of the right to use such a result or such a means under an agreement, as well as the transfer of the exclusive right to such a result or such a means without an agreement, are also subject to state registration, the procedure and conditions of which are established by the Government of the Russian Federation.”

Consequently, if a liquidated legal entity has at its disposal objects of intellectual property that are subject to state registration (for example, trademarks or patents), the question arises of how to correctly register the transfer of exclusive rights to such objects within the framework of the liquidation procedure of the legal entity. Otherwise, “if the requirement for state registration of the transfer of the exclusive right to a result of intellectual activity or to a means of individualization under an agreement on the alienation of the exclusive right or without an agreement is not observed, a pledge of the exclusive right or granting another person the right to use such a result or such a means under an agreement, the transfer of the exclusive right , its pledge or grant of the right to use is considered invalid.” (Clause 6 of Article 1232 of the Civil Code of the Russian Federation).

As a rule, in order to transfer property to the participants of a liquidated company, a document is prepared confirming the distribution of property and signed by liquidation commission (liquidator) and participants of such a company, which seems to create the appearance of the need to register such a transfer of exclusive rights in accordance with the alienation procedure under a contract.

However, according to clauses 3 and 3.1. Article 1234 of the Civil Code of the Russian Federation, “under an agreement on the alienation of an exclusive right, the acquirer undertakes to pay the right holder the remuneration stipulated by the agreement , unless otherwise provided by the agreement.

If there is no provision in a paid agreement on the alienation of an exclusive right regarding the amount of remuneration or the procedure for determining it, the agreement is considered not concluded. In this case, the rules for determining the price provided for in paragraph 3 of Article 424 of this Code do not apply.

The gratuitous alienation of an exclusive right in relations between commercial organizations is not permitted, unless otherwise provided by this Code.”

Moreover, in accordance with paragraphs 2.2.1. Order of Rospatent dated December 29, 2009 No. 186 “On approval of Recommendations on the verification of contracts on the disposal of the exclusive right to results of intellectual activity or means of individualization”, “when checking documents submitted for registration of contracts, it is advisable to pay attention to the execution of documents and the compliance of all submitted documents with the requirements and conditions for registration of contracts.

It is recommended to check documents for compliance with registration conditions in the following sequence:

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j) checking the presence in a paid agreement on the alienation of the exclusive right to an invention, utility model, industrial design, trademark or granting the right to use an invention, utility model, industrial design, trademark, as well as a trademark protected on the territory of the Russian Federation in accordance with international treaties, conditions on remuneration or the procedure for determining it in accordance with paragraph 3 of Article 1234 of the Code and paragraph 5 of Article 1235 of the Code.

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Meanwhile, when distributing property (including exclusive rights) of a liquidated legal entity, its participants do not pay any remuneration for the alienation of such property by them, since it passes to them by way of singular legal succession, and therefore there is no essential condition, provided for by law for contracts for the alienation of exclusive rights to intellectual property.

Taking into account the above, the Arbitration Court of the Moscow District, in a resolution dated 10.10.2022 in case No. A41-76479/2021, came to the conclusion that state registration of the transfer of exclusive rights to intellectual property objects, also subject to state registration, the copyright holder of which is a liquidated legal entity, to its founders should carry out the alienation procedure without concluding an agreement. By ruling of the Supreme Court of the Russian Federation dated 02/03/2023 No. 305-ES22-27651, the transfer of the cassation appeal for consideration at a court session of the Judicial Collegium for Economic Disputes of the Supreme Court of the Russian Federation was refused.

The above is also consistent with the fact that, based on the interpretation of Article 1241 of the Civil Code of the Russian Federation, the list of grounds for the transfer of an exclusive right to another person without concluding an agreement with the copyright holder is open, which may also include the transfer of exclusive rights to the founders (participants) of a legal entity upon its liquidation.

To summarize, despite the fact that civil legislation does not directly provide for the procedure for distributing the exclusive rights of a liquidated legal entity in favor of its founders (participants), a systematic interpretation of the rules of law allows us to identify the basic rules, avoiding future difficulties with their use by legal successors.