Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
How to buy "half patent"? Partial cession of rights for items of intellectual property
Intellectual property divisibility.
Partial cession of rights for items of intellectual property.
The problem of the intellectual property divisibility and an opportunity of its partial cession is rather interesting. In the modern business environment a necessity of a right acquisition for duplication of a piece of work arises often, that is a copyrighted item or its reproduction. Many companies are interested in the patents and trademarks acquisition, thus a right holder is not always ready to concede a right to the full extent for an item owned by it. The law presupposes possibility in principle of a partial cession of rights for items of intellectual property, but this opportunity is implemented in a different way in different cases.
As a rule, all trademarks registered for one group of the goods and that are similar or identical, are owned by one holder. Notably, this requirement is reflected in the law – according to the Civil Code of RF, the rights for similar or identical designations registered for the homogeneous goods, can't belong to different legal entities. That is, a right holder can transfer the rights only for the entire series of the trademarks.
The situation changes if a company has designations registered for different groups of goods. In this case the right can be transferred both for all goods and for the goods of a certain class, what will make it possible for the companies to own the rights for the designations in relation to different goods and services. Among other things, a right holder can concede a mark to his/her partner to be used in marking of a certain group of the goods or for a full class of MKTU (International Classification of Goods and Services).
A right holder can transfer such a right having entered into an assignment contract of a trademark or license contract with a legal successor. The first kind of a contract regulates the exclusive right transfer for a designation fully or partially, the second – a right granting for its uses in highly restricted fames. These kinds of the documents have been already discussed by us with more details in article "How to transfer or sell a trademark in a correct way? Nuances of a license contract and an assignment contract". Everything that has been stated earlier can be supplemented only by the fact that in case when a right holder transfers the rights for a partial use of a designation owned by him/her, a contract shall contain obligatorily the information as to in relation of what goods and services a trademark transfer is made and on what terms and conditions.
As to a partial cession of rights, a patent is the clumsiest item of the intellectual property. Patents can be transferred partially only in case when there are independent clauses in them, in all the rest cases it is almost impossible. Thus, please note that a patent can belong not only to one author – this document can have several authors or right holders, and the law provides for an opportunity of collective ownership of a patent with allotment or without allotment of stakes.
Actually it is impossible to transfer a certain part of a patent to a certain person but a quantity of right holders can be expanded – that is full or partial sale of one's stake in a patent, having made a buyer, in doing so, to be one's joint holder.
A new holder will gain all the rights for a patent use, including a right for the goods manufacture or services rendering and protection of one's interests at court. Such relations are regulated by a contract on joint possession of patent rights. For all that there arises a phenomenon reminding to a certain extent of a "common property" (chapter 16 of the Civil Code of RF), in which the joint holders of patent rights have an opportunity to exercise their rights jointly, under the conditions determined by their agreement, and in case it is not available – by the law.
Author's rights, are no doubt the most interesting object for a partial cession of rights. Article 1270 of the Civil Code of the Russian Federation reflects a huge quantity of the rights that are held by an author of a piece of work and all these rights or any of them can be sold or transferred to some organization or to an individual. What is meant here is an opportunity of reproduction of a piece of work, its distribution through sale, public show, distribution or import of an original and many other things. For all that, relations between an author and acquirer of the rights are regulated by a standard contract that even does not need a state registration. According to the law, the author's rights are transferred only in that volume in which it is stated in a contract. That is, if an author transfers the right of duplication of his/her piece of work on discs, it does not mean that a right acquirer may also distribute a piece of work on cassettes.
Rights for a trademark and patent can be transferred, are owned exceptionally in the territory of the entire Russia whilst the author's rights can be transferred in any territory: in the territory of RF, in the territory of Moscow, region, up to an appropriation of a concrete street or house.
Let us specify that despite this, there exists a good deal of nuances in the issue of a partial cession of rights for items of intellectual property that can raise questions in a unprepared person, which can be answered by a specialist having a big work experience in the field of the author's right. For all that, wrong drawing up of a contract or its incompetent registration can cause much trouble to a right holder and to a legal successor and even result in the fact that the rights transfer will be declared invalid! This is precisely why, should a necessity arise to draw up such documents, the best thing is to consult professionals in the field of work with the items of the intellectual property.
The original article was published in journal "Na stol rukovoditelu" in 2012, issue No. 45 (http://www.nastol.ru/Go/ViewArticle?id=4239)