MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

License agreements in Eurasia

In accordance with paragraph 2 of Article 1232 of the Civil Code of the Russian Federation the License Agreement shall be subject to official registration. Failure to meet the requirement on official registration shall entail the invalidity of the License Agreement.

Under the Russian patent legislation a license is not recorded for a pending case and can be registered only upon issuance of the Russian patent.

The documents required for the recordal of a license in respect of one Russian patent are as follows:

1) one original OR one notarized copy of the License Agreement, which should be signed and stamped by the parties with specifying authorized persons' names and corporate positions (preferably Director/CEO/Manager). Instead of originals or notarized copies it is also possible to provide the Russian Patent Office with one notarized extract from the License Agreement;

2) one original Power of Attorney from the Licensor OR Licensee, which should be signed and stamped with specifying authorized person's name and corporate position; notarization or legalization is not required, unless it is signed by an authorized signatory.

The License Agreement should contain the following data:

  1. parties to the Agreement (names and addresses);
  2. subject of the Agreement (patent number and title);
  3. scope of rights of the Licensee under the Agreement (production, exploitation, import, offer for sale, sale, etc.);
  4. type of license;
  5. term of the Agreement;
  6. amount and terms of payment under the Agreement;
  7. party that will borne all the expenses;
  8. special conditions of the Agreement, including possibility of granting sublicenses;
  9. territory of the Agreement.

Alternatively, under the Russian patent legislation a license can be recorded on the basis of the Powers of Attorney only. Thus, the request for the recordal of a license is filed along with the originals of the Powers of Attorney from both parties to the License Agreement without a necessity to provide the License Agreement itself. If this way is acceptable, the data required for the License Agreement should be indicated in the corresponding request for the recordal.

Anyway, the license recordal procedure typically takes 2-3 months. As soon as the license is recorded an Official Notification on license and a Supplement to the patent are issued.