MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

LICENSING

Patent in Russia | Frequently Asked Questions
1.  Voluntary licensing
2.  Compulsory licences




Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The terms and conditions of a licence contract are under the sole responsibility of the contracting parties and can be chosen by them. Text in the licence agreement must include the subject matter (patent), filing date, title, a territory and the term of the licence, a reward and ways of use of the invention. Licence agreements must be registered with the Russian Patent Office, otherwise, or until they are registered, the agreement will be considered invalid. If any of the above-mentioned obligatory points are not included in the agreement, the Russian Patent Office issues an office action asking for the agreement to be improved. The registration procedure may last about three months.





Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The compulsory licensing provisions are governed by the Civil Code of the Russian Federation, article 1362. Compulsory licences may be granted by a court decision. If an invention fails to be used or is insufficiently used by the patent holder during the period of four years from the issuance of a patent that leads to insufficient offer of the respective goods, works or services on the market, any person willing and ready to use such an invention who has been refused by the patent holder to conclude with such a person a licence contract on terms corresponding to common practice shall have the right to initiate a legal action against the patent holder for the granting of a compulsory licence for the use within the territory of the Russian Federation.

If the owner of the patent cannot use the invention without infringing the rights of another patent owner, he or she shall have the right to demand of the latter that he or she conclude a licence contract.


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Moscow, 123290

Russia

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