Types of Licenses in Intellectual Property Law

As it is known, the content of the exclusive right as an absolute property right, in relation to almost all the results of intellectual activity and means of individualization, is the right to use an intellectual property object in any way that does not contradict the law and the right to dispose of the exclusive right to such an object.

At the same time, one of the most popular ways to dispose of the exclusive right is the issuance of licenses. The issuance of a license for an intellectual property object is the granting by the right holder of the right to use the result of intellectual activity or means of individualization to the licensee within the limits established by the contract.

This article will consider the types of licenses provided for by domestic legislation.

Exclusive and non-exclusive licenses

The most popular basis for the classification of licenses and the most frequently used in the work of an intellectual property lawyer is the classification based on the scope of the rights transferred under the contract and the condition that the right holder retains the right to use the object of intellectual property rights and dispose of the exclusive right to it.

The legislation directly names only two types of such licenses: exclusive and non-exclusive.

Thus, in accordance with subparagraphs 1, 2 of paragraph 1 of Article 1236 of the Civil Code of the Russian Federation, a license agreement may provide:

1. Granting the licensee the right to use the result of intellectual activity or means of individualization while retaining the licensor's right to issue licenses to other persons (simple (non-exclusive) license).
2. Granting the licensee the right to use the result of intellectual activity or means of individualization without reserving the licensor's right to issue licenses to other persons (exclusive license).

Thus, in the first case, the issuance of a license by the right holder to one person does not deprive him of the opportunity to issue licenses to other persons, while in the second case, the right holder remains without such an opportunity.

Moreover, when issuing an exclusive license, it is presumed that the right holder himself is deprived of the right to use the result of intellectual activity or means of individualization within the scope of the powers transferred to the licensee.

The right of the right holder to use the object and dispose of the exclusive right to it thus goes into "sleep mode", however, in the event of violation of the exclusive right, the right holder is not deprived of the opportunity to protect it.

At the same time, it is customary in the doctrine to distinguish other types of licenses on this basis of classification, which are not directly named in the law.

Other types of licenses

In particular, there are shifted licenses, i.e. licenses when different licensing regimes are applied to different ways of using the result of intellectual activity or means of individualization (or, for example, to different goods or services, if we are talking about a trademark).

Take, for example, a trademark registered in relation to goods of classes 25, 29, 30 of the Nice Classification. You can grant the counterparty the right to use the trademark in relation to goods 25 of the Nice Classification under a non-exclusive license, and in relation to goods of 29, 30 classes of the Nice Classification - under an exclusive license.

In addition, the doctrine also distinguishes full and only licenses.

Thus, "full" licenses are licenses issued for the entire period of validity of the exclusive right, allowing the use of the object of intellectual property rights in any way that does not contradict the law throughout the world.

At the same time, domestic legislation does not allow the free issuance of such licenses in relations between commercial organizations.

Thus, in accordance with clause 5.1. of Article 1235 of the Civil Code of the Russian Federation, "it is not allowed to grant free of charge the right to use the result of intellectual activity or means of individualization in relations between commercial organizations throughout the world and for the entire period of validity of the exclusive right under the terms of an exclusive license, unless otherwise established by this Code".

"Only" licenses differ from exclusive licenses in that when issuing such a license, the right holder does not have the right to issue licenses to other persons, but retains the right to use the intellectual property object independently.

Special types of licenses

It is also worth noting that in relation to various results of intellectual activity and means of individualization, the legislation provides for special types of licenses.

For example, domestic legislation distinguishes such types of licenses as "open" and "public" licenses.

An open license for the use of a work of science, literature or art is provided for by Article 1286.1 of the Civil Code of the Russian Federation, it is an adhesion agreement concluded in a simplified manner, the terms of which must be determined by the copyright holder in such a way that the licensee could familiarize himself with them before using the work.

An open license may contain an indication of actions, the performance of which will be considered as acceptance of its terms. In this case, the written form of the contract is considered to be complied with.

In addition, such a license is non-exclusive.

It is also presumed that, unless otherwise provided by the agreement, an open license is gratuitous, and the period for which the right to use under an open license is granted is 5 years in relation to works of science, literature or art, indefinitely in relation to computer programs and databases.

In the absence of an indication of the territory in the contract, the right to use under an open license is considered to be granted throughout the world.

At the same time, the provisions provided for by Article 1286.1 of the Civil Code of the Russian Federation on the provision of an open license for the use of a work of science, literature or art also apply to objects of related rights in the event that a license agreement for an object of related rights is concluded in a simplified manner (Clause 2 of Article 1308 of the Civil Code of the Russian Federation).

An open license for the use of a work of science, literature or art provided for by Article 1286.1 of the Civil Code of the Russian Federation should be distinguished from an open license for an invention, utility model or industrial design provided for by Article 1368 of the Civil Code of the Russian Federation and an open license for a selection achievement provided for by Article 1429 of the Civil Code of the Russian Federation.

Thus, in accordance with the provisions of Article 1368 of the Civil Code of the Russian Federation, "the patent owner may file with the Federal Executive Body in the Field of Intellectual Property an application for the possibility of granting any person the right to use the invention, utility model or industrial design (open license)".

As a result of the above actions, the amount of the patent fee for maintaining a patent for a patent right in force shall be reduced by fifty percent starting from the year following the year of publication by Rospatent of information on the open license.

The terms of such a license are communicated by the right holder to Rospatent, which, in turn, publishes the relevant information about the open license at the expense of the patent owner. The patent owner is obliged to conclude a license agreement with the person who has expressed a desire to use the patented object on the terms of a simple (non-exclusive) license.

Similar provisions are contained in Article 1429 of the Civil Code of the Russian Federation in relation to selection achievements.

As it seems, there is not much in common between an open license for the use of a work of science, literature or art provided for by Article 1286.1 of the Civil Code of the Russian Federation and open licenses for an invention, utility model, industrial design and selection achievement provided for by Articles 1368 and 1429 of the Civil Code of the Russian Federation.

Another type of license in relation to objects of copyright and related rights is a public license, which, with certain reservations, can be called similar to open licenses provided for objects of patent law and selection achievements.

Within the meaning of paragraph 5 of Article 1233 of the Civil Code of the Russian Federation, the issuance of such a license is carried out by means of a public expression of the will of the right holder to grant an indefinite number of persons free of charge the right to use a work of science, literature or art belonging to him or an object of related rights on the terms and conditions determined by the right holder and within the period specified by him. During the specified period, any person has the right to use this work or this object of related rights under the conditions determined by the right holder.

The application shall be made by posting it on the official website of the federal executive body on the Internet.

According to the Rules (The Rules for Posting Applications of Right Holders to Provide Any Persons with the Opportunity to Use Works of Science, Literature, Art or Objects of Related Rights Free of Charge on the Conditions Determined by the Right Holder and within the Period Specified by the Right Holder, approved by the Right Holder. Decree of the Government of the Russian Federation dated June 8, 2019 No. 745), such an executive body is the Ministry of Culture of the Russian Federation.

At the same time, the validity period of such a license is 5 years, and the territory in which the right to use the object of copyright or related rights is granted is the territory of the Russian Federation, in the absence of specification of the relevant conditions in the application.

In relation to some objects of intellectual rights, the legislation provides for the possibility of issuing compulsory licenses, which, in essence, is a restriction of the right holder's freedom to dispose of his subjective right.

In particular, in accordance with Article 1239 of the Civil Code of the Russian Federation, "in the cases provided for by this Code, the court may, at the request of an interested person, decide to grant this person the right to use the result of intellectual activity, the exclusive right to which belongs to another person (compulsory license)" on the terms specified in the court decision.

At the moment, the Civil Code of the Russian Federation provides for the possibility of issuing a compulsory license in two cases:

1. Compulsory license for an object of patent law (Article 1362 of the Civil Code of the Russian Federation);
2. Compulsory license for a selection achievement (Article 1423 of the Civil Code of the Russian Federation).

At the same time, a compulsory license has the following features:

• the issuance of a license, as a rule, is conditioned by the insufficient use of a particular object, which leads to an insufficient supply of the relevant goods, works or services on the market (thus, public interests are affected);
• can be issued only on the basis of a court decision;
• is always non-exclusive;
• is of a compensatory nature;
• may be terminated at the request of the right holder if the circumstances that served as the basis for its issuance disappear.

Thus, it can be noted that the mechanisms for licensing the results of intellectual activity and means of individualization provided for by Russian legislation, on the one hand, make it possible to balance the interests of right holders and society, on the other hand, provide flexibility in the disposal of exclusive rights to intellectual property objects by right holders in various conditions and for different purposes.