home Job Section XII. §1. Civil legal forms of acquisition and commercial use of intellectual property and know-how

Section XII. §1. Civil legal forms of acquisition and commercial use of intellectual property and know-how

Obligations to use exclusive rights and know-how

the author's permission to use the work means the right to carry out or authorize such actions, how, in particular, to reproduce the work, distribute copies of the work, translate it, adapt it, arrange or otherwise process the work. Since all specified permissions are usually are formalized by agreement, we can say that the use of exclusive copyrights is at the same time their disposal.

Strictly speaking, copyright law, patent law, related rights and the right to trademarks do not at all know the collective category of “disposal” of exclusive rights. For example, the rights of the patent holder to assign the patent and to grant any third party the right to use the protected object under a license agreement are enshrined in clause 5 of Art. 10 and paragraph 1 of Art. 13 of the Patent Law in section. IV, called “Exclusive right to an invention, utility model, industrial design.” In other words, with regard to exclusive rights, everything property rights are reduced to the right to use their objects. Only the forms of issuing permission to use exclusive rights to third parties are differentiated, or, more precisely, the methods and forms of them acquisitions.

IN literature, the opinion has been expressed that the transfer of property copyrights should be distinguished from the transfer of these rights to another person. Transition is a broader concept: this also includes those cases when copyrights are transferred to another person against the will of the author (inheritance, transfer of rights to proprietary works, transfer of rights to audiovisual works, etc.) 1. This opinion, in addition to its obvious tautology (“transition is when rights are transferred”), suffers from incomplete forms derivative acquisition exclusive rights. Civil legal relations regarding the use of exclusive rights and know-how are not limited to contractual obligations for their acquisition and use.

2. Methods for acquiring exclusive rights

In the sphere of exclusive rights, by analogy with real rights, one should operate with the broadest category "acquisitions

1 See: Gavrilov E.P. Commentary on the Law on Copyright and Related Rights. M., 1996. P. 134.

Obligations to acquire and use exclusive rights Chapter 49 § 1 (2)

rights" and distinguish between their original and derivative modes. To the original methods relate:

independent creation and expression in an objective form of works of science, literature and art;

obtaining patents and certificates of inventions, utility models, industrial designs;

the creation of these works and objects in an official capacity, entailing the emergence by force of law or the fact of obtaining a patent of initial exclusive rights from employers.

The form of initial acquisition of exclusive rights is also assignment of the right to obtain a patent. The right to obtain a patent for an object, i.e. not an exclusive right, but only the potential possibility of acquiring it, firstly, can be ceded at the stage of registration of exclusive rights. By virtue of paragraph 2 of Art. 8 of the Patent Law, a patent can be issued not only to the author of an invention or other object, but also to their legal successors, including heirs.

Secondly, the employer of the person who created the patentable subject matter, which has the original right to patent it, can transfer this right under the contract to any other person.

The right to patent objects (if they are created) when performing work under a state or municipal contract, as a general rule, belongs to the performer (contractor).

Within derivative acquisition exclusive rights can be distinguished in such relatively independent ways as:

assignment of an exclusive right;

transfer (introduction) of an exclusive right;

granting an exclusive right;

transfer of exclusive rights.

For example, it is allowed: assignment of patent(clause 5 of article 10 of the Patent Law); broadcast property copyrights (Article 30 of the Copyright Law), including in trust management (clause 1 of Article 1012, clause 1 of Article 1013 of the Civil Code); provision the patent holder (licensor) to the licensee under a license agreement the right to use the protected object (clause 1, article 13 of the Patent Law) or the right holder (franchisor) to the user (franchisee) - a set of exclusive rights (clause 1, article 1027 of the Civil Code); transition copyright by inheritance (Article 29 of the Copyright Law) or any exclusive

The results of intellectual activity and means of individualization are widely used to make a profit. Thus, authors of musical works can allow others to use their music for money. Why can't other citizens, for example, take a song and play it in the background on their video? This happens because the owner of the music has an exclusive right to this object, and everyone else does not. It, as we found out (see), presupposes the possibility of using the work in any way within the framework of the law. Consequently, other persons are maximally interested in receiving it.

Methods of transferring an exclusive right

Before delving into the consideration of specific methods, we draw the reader’s attention to the fact that of all groups of intellectual rights (you can familiarize yourself with them), only the exclusive ones can be transferred from one person to another. The rest are inalienable: for example, if the telephone was invented by A. Bell, then this right of authorship remains with him forever: neither his heirs nor other persons can be considered authors.

Let us also recall that the exclusive right is valid for a certain period, therefore, only during this time period can it be transferred to other persons. For example, an object such as a work can be used during the life of the author and for seventy years after his death. After this period legal protection and, accordingly, the exclusive right is terminated, the work becomes public property.

So, the Civil Code of the Russian Federation provides for two methods of transition: non-contractual and contractual. Let's take a closer look at them.

Non-contractual method

Since the exclusive right is an object of civil rights (see Article 128 of the Civil Code of the Russian Federation), such civil law institutions as inheritance and reorganization of a legal entity are applied to it.

Inheritance is a legal relationship that arises at the time of the death of the testator and involves the transfer of all the property of the deceased to his heirs. Being included in the list of Article 128 of the Civil Code of the Russian Federation, the exclusive right is inherited in the general manner. Thus, after the death of the author of a work, it passes to his heirs, which means that the latter will be able to use this work for a limited period (seventy years).

Reorganization of a legal entity involves the creation of a new legal entity as a result of merger, accession, division, separation, transformation. In this case, the newly created legal entity will have exclusive rights. So, for example, when two joint-stock companies merge into one, the new entity is considered the copyright holder, for example, of a commercial designation and a trademark.

Contractual method

Here the basis is an agreement for the right to use intellectual property, by virtue of which one party transfers an exclusive right to the other, and the other, as a rule, undertakes to pay the corresponding remuneration.

Today, Russian legislation provides for two such agreements: a license agreement and an agreement on the alienation of exclusive rights. Both contractual structures involve the transfer of rights to intellectual property, but they have significant differences. Let's take a closer look.

License agreement on the transfer of intellectual property rights

It seems that everyone has come across this agreement at least once in their lives, and even more than that: many have also personally concluded it. Installing computer game, we check the box that we agree to the license agreement, thereby agreeing with everything that is said there. Such agreements outline the limits of the use of an intellectual property object (video game): basically, we are given the right to use the game only for personal purposes, and distributing copies of it is prohibited.

The parties to a license agreement are the licensor (right holder) and the licensee (the one who accepts the rights to the object). The main requirements are set out in Article 1235 of the Civil Code of the Russian Federation; let us pay attention to the most important among them:

Mandatory written form;
Registration of the transfer of rights in cases where this right initially required registration (for example, in the field of patent law);
The possibility of concluding an agreement for a period that does not exceed the validity period of the exclusive right to the object of intellectual rights;
If the exclusive right is terminated, the contract is automatically terminated;
By general rule is of a remunerative nature (i.e. the licensee must pay a remuneration), although gratuitousness can also be provided for;
Mandatory conditions are: the subject of the contract (i.e. the right that will be transferred to the licensee), as well as methods of using the intellectual property;
The exclusive right, despite the transfer, remains with the licensor (copyright holder).

Alienation of intellectual property rights

This construction is regulated by Article 1234 of the Civil Code of the Russian Federation. In general, the conditions are similar to the terms of a license agreement, but there is a significant difference: here the rights are always transferred, firstly, in full, and secondly, the copyright holder simultaneously loses them. Of course, within the framework of licensing agreements there is such a thing as an exclusive license, under which rights can be transferred in full (see Article 1236 of the Civil Code of the Russian Federation), however, the second feature (complete alienation) is in no case characteristic of licensing agreements.

Thus, under a licensing agreement, the licensor retains the rights (for example, the patent holder can either dispose of his invention himself or allow other persons who have entered into an agreement to use it).

In an alienation agreement, the rights in full are transferred and finally transferred to another person. Quite often this method is used, for example, when transferring rights to a trademark and service mark.

In the field of exclusive rights, by analogy with real rights, one should operate with the broadest category of “acquisition of rights” and distinguish between their initial and derivative methods. Initial methods include:

independent creation and expression in an objective form of works of science, literature and art;

obtaining patents and certificates for inventions, utility models, industrial designs;

5 See: Zenin I.A. Invention law: nature, functions, development // Sov. state and law. 1980. No. 2. P. 51.

6 See: Gavrilov E.P. Commentary on the Law on Copyright and Related Rights. M., 1996. P. 134.

The creation of these works and objects in an official capacity, entailing the emergence by force of law or the fact of obtaining a patent of initial exclusive rights from employers.

A form of initial acquisition of exclusive rights is also the assignment of the right to obtain a patent. The right to obtain a patent for an object, i.e. not an exclusive right, but only the potential possibility of acquiring it, firstly, can be ceded at the stage of registration of exclusive rights. By virtue of paragraph 2 of Art. 8 of the Patent Law, a patent can be issued not only to the author of an invention or other object, but also to their legal successors, including heirs.

Secondly, the employer of the person who created the patentable object and has the original right to patent it can transfer this right under a contract to any other person.

The right to patent objects (if they are created) when performing work under a state or municipal contract, as a general rule, belongs to the performer (contractor).

Within the framework of the derivative acquisition of exclusive rights, one can distinguish such relatively independent methods as:

assignment of an exclusive right;

transfer (introduction) of an exclusive right;

granting an exclusive right;

transfer of exclusive rights.

The establishment of unambiguous criteria for delimiting the assignment, transfer (introduction), granting and transfer of exclusive rights is complicated not only by their different understanding in doctrine and in practice, but also by unequal interpretation in the law itself. This determines the relative independence of some of these forms of derivative acquisition of exclusive rights. Specific forms differ primarily in the basis of acquisition (agreement, law), the scope of rights (in whole, in part) and the timing of their acquisition (forever, temporarily).

The assignment of exclusive rights usually occurs by agreement in full and forever.

The transfer is also carried out, as a rule, under an agreement (copyright, patent license, trust management agreement, etc.), but partially and temporarily. At the same time, this type of transfer, such as “contribution,” can occur both on the basis of constituent documents and by law.

The granting of rights can be based on both an agreement (for example, a franchise agreement) and a legal fact directly specified in the law (granting rights to the creator of an audiovisual work in accordance with Article 13 of the Copyright Law or to the prior user - in accordance with Article 12 of the Patent Law law). At the same time, the classic transfer of rights under a license agreement in clause 1 of Art. 13 of the Patent Law is also referred to as their grant.

Thus, in each specific case it is necessary to identify the essence of the subject of the agreement, and not its verbal form. Rights can be granted without a time limit or temporarily.

The transfer of exclusive rights, as a rule, is carried out by virtue of direct instructions of the law (inheritance, reorganization of a legal entity, contribution to the authorized capital). The transition is usually not limited by any deadlines.

So, among the various methods of derivative acquisition of exclusive rights, one should distinguish between obligatory and other methods that lie outside of obligations - such as the granting of exclusive rights by law, their transfer (contribution) to the common property of partners or to the authorized (share) capital, and also transition in the order of universal or singular succession.

More on topic 2. Methods of acquiring exclusive rights:

§ 1. Civil methods of acquiring and using exclusive rights
§ 2. Legal obligations methods for acquiring and using exclusive rights and know-how
Section XII. Obligations to acquire and use exclusive rights and know-how
2. Classification of agreements on the acquisition and use of exclusive rights and know-how
Chapter 49. Obligations and other civil legal relations for the acquisition and use of exclusive rights and know-how

Before considering contracts of the fourth class, within which obligations arise for the acquisition and commercial use of exclusive rights and know-how, it is necessary to briefly analyze obligations and other civil legal relations for the use of exclusive rights and know-how as such. Liabilities and other civil forms of commercial exploitation of exclusive rights (intellectual property) and confidential information (know-how) generate billions of dollars in turnover each year around the world. The pace of trade in patents, licenses, copyrights, related rights, trademark rights and information such as know-how is constantly growing. The fight against intellectual piracy is intensifying. Much attention is paid to the implementation of rights to the results of intellectual activity and trade in know-how, the fight against audio-video, etc. piracy, the development of scientific research and education in the intellectual sphere is given industrial attention the developed countries And international organizations, in particular World organization Intellectual Property Organization (WIPO) and the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP)286.

Happening in Russian Federation Market reforms have not yet significantly affected either the area of protection of the results of mental work, much less the area of using exclusive rights and know-how.

Meanwhile, the interests of effectively using the great intellectual potential of our country require more specific and decisive measures. This is necessary in connection with Russia’s desire to cooperate in this area with other countries within the framework of the International Agreement on Tariffs and Trade (GATT), the World Trade Organization (WTO) and the Agreement on the Commercial Use of Intellectual Property (TRIPS). For these purposes, it is relevant to study civil legal relations regulated by current legislation on the use of both exclusive rights to the results of intellectual activity and unprotected confidential information constituting a trade secret (know-how). An analysis of these legal relations indicates the unregulated nature of many important aspects of the use of exclusive rights and know-how, an ambiguous understanding of the categories used in this area and even the functions of intellectual property institutions and know-how in the use of the results of mental labor.

The concept of using exclusive rights (intellectual property). One of the functions of the institution of exclusive rights (intellectual property) is the establishment of a regime for the use of the results of intellectual activity and means of individualization of goods and their manufacturers (Article 138 of the Civil Code). This function is implemented by assigning to copyright holders exclusive rights to use the results of intellectual activity and equivalent means of individualization of goods and their manufacturers.

In particular, the Law “On Copyright and Related Rights” (ZAP) establishes that the author in relation to his work has exclusive rights to use the work in any form and in any way (Clause 1, Article 16). In the same way, the patent holder owns the exclusive right to an invention, utility model or industrial design. No one has the right to use these patented objects without the permission of the patent holder (paragraph 1. clause 1 of article 10 of the Patent Law of September 23, 1992, as amended on February 7, 2003 No. 22-FZ).

Intellectual property in general and its individual institutions do not regulate the process of practical application of individual results of mental labor. The fact is that the use, for example, of inventions comes down to their design and technological (and often scientific and applied) development, the production of technical documentation and prototypes, equipment and special tools, re-adjustment of equipment, organization and logistics of production, training new personnel, financing the costs of all these needs and economic incentives for workers. There is nothing in this that would serve as a specific subject and function of patent (invention) law287.

In the interests of society, the law provides for fairly broad restrictions on exclusive rights. It is allowed, under certain conditions, to freely use works without the consent of the author and without payment (or with payment) of royalties (Articles 17-26 of the Administrative Code). The possibility of free use of objects of related (Article 42 of the Administrative Code), patent (Articles 11, 12 of the Patent Law) rights and rights to trademarks has been established. In particular, registration of a trademark does not give its owner the right to prohibit the use of this mark by other persons in relation to goods that were put into economic circulation directly by the owner of the trademark or with his consent (Article 23 of the Law “On Trademarks, Service Marks and Appellations of Origin goods"). However, the opportunity to use the results of intellectual activity with their own forces and means, including for business purposes, first and foremost belongs to the holders of exclusive property rights to these results. The law also provides a legal interpretation of the signs of the use of individual objects of exclusive rights. For example, in accordance with paragraph 2 of Art. 10 of the Patent Law, a product (product) is recognized as manufactured using a patented invention, utility model, and a method protected by a patent for an invention applied if it uses each feature of the invention or utility model included in an independent claim of the formula, or an equivalent feature . A product is recognized as manufactured using a patented industrial design if it contains all its essential features.

In contrast to the use of objects, say, property rights, the use of exclusive rights is understood not only

the use by the right holders of the objects of these rights themselves, but also the granting of permission to carry out actions for their use by third parties. For example, according to paragraph 2 of Art. 16 of the Code of Administrative Offenses, the author’s exclusive rights to use a work mean the right to carry out or authorize such actions as, in particular, to reproduce the work, distribute copies of the work, translate it, remake, arrange or otherwise process the work. Since all of these permissions are usually formalized by agreement, we can say that the use of exclusive copyrights is at the same time their disposal.

Strictly speaking, copyright, patent law, related rights and the right to trademarks do not at all know the collective category of “disposal” of exclusive rights. For example, the rights of the patent holder to assign the patent and to grant any third party the right to use the protected object (under a license agreement) are set out in paragraph 5 of Art. 10 and paragraph 1 of Art. 13 of the Patent Law in section IV, called “Exclusive right to an invention, utility model, industrial design.” In other words, with regard to exclusive rights, all property rights are reduced to the right to use their objects. Only the forms of granting permission to use exclusive rights to third parties, or more precisely, the methods and forms of their acquisition, are differentiated.

There is an opinion that the transfer of property copyrights should be distinguished from the transfer of these rights to another person. Transition is a broader concept: this also includes those cases when copyrights are transferred to another person against the will of the author (inheritance, transfer of rights to proprietary works, transfer of rights to audiovisual works, etc.)288. This opinion, in addition to its obvious tautology (“transition is when rights are transferred”), suffers from incomplete forms of derivative acquisition of exclusive rights. Initial and derivative methods of acquiring exclusive rights. In the field of exclusive rights, by analogy with real rights, one should operate with the broadest category of “acquisition of rights” and distinguish between its initial and derivative methods. The original method includes: independent creation and expression in an objective form of works of science, literature and art; obtaining patents and certificates for inventions, utility models, industrial designs; the creation of these works and objects in an official capacity, entailing the emergence by force of law or the fact of obtaining a patent of initial exclusive rights from employers.

A form of initial acquisition of exclusive rights is also the assignment of the right to obtain a patent. The right to obtain a patent for an object, i.e. not the exclusive right, but only the potential possibility of acquiring it, can be ceded at the stage of registration of exclusive rights. By virtue of paragraph 2 of Art. 8 of the Patent Law, a patent can be issued not only to the author of an invention or other object, but also to their legal successors, including heirs.

In addition, the employer of the person who created the patentable object and has the original right to patent it may transfer this right under a contract to any other person.

The right to patent objects (if they are created) when performing work under a government contract, as a general rule, belongs to the performer (contractor).

Within the framework of the derivative acquisition of exclusive rights, one can distinguish such relatively independent forms as: 1.

Concession. 2.

Transfer (depositing). 3.

Providing. 4.

For example, the following is allowed: assignment of a patent (Clause 5, Article 10 of the Patent Law); transfer of property copyrights (Article 30 of the Code of Administrative Offenses), including to trust management (clause 1 of Article 1012, clause 1 of Article 1013 of the Civil Code); provision by the patent owner (licensor) to the licensee under a license agreement of the right to use the protected object (clause 1, article 13 of the Patent Law) or by the copyright holder (franchisor) to the user (franchisee) - a set of exclusive rights (clause 1, article 1027 of the Civil Code); transfer of copyright by inheritance (Article 29 of the Code of Administrative Offenses) or any exclusive rights under a transfer deed or separation balance sheet during the reorganization of a legal entity (clause

1 tbsp. 59 Civil Code).

Interpretation of various forms of derivative acquisition of exclusive rights. The establishment of unambiguous criteria for delimiting the assignment, transfer (introduction), granting and transfer of exclusive rights is complicated not only by their different understanding in doctrine and in practice, but also by unequal interpretation in the law itself. This determines the relative independence of some of these forms of derivative acquisition of exclusive rights. Specific forms differ primarily in the basis of acquisition (agreement, law), the scope of rights (in whole, in part) and the timing of their acquisition (forever, temporarily).

The assignment of exclusive rights usually occurs by agreement in full and forever. The transfer is also usually carried out under an agreement (copyright, patent-licensing, trust management agreement, etc.), but partially and temporarily. At the same time, this type of transfer as “contribution” can also occur on the basis of constituent documents according to the law.

The granting of rights can be based on both an agreement (for example, a franchise agreement) and the law (granting rights to the creator of an audiovisual work under Article 13 of the Administrative Code or to the prior user under Article 12 of the Patent Law). At the same time, the classic transfer of rights under a license agreement in clause 1 of Art. 13 of the Patent Law is also referred to as their grant. So in each specific case it is necessary to identify the essence of the subject of the contract and not its verbal form. Rights can be granted without a time limit or for a period of time.

The transfer of exclusive rights, as a rule, is carried out by force of law (inheritance, reorganization of a legal entity, contribution to the authorized capital). The transition is usually not limited by any deadlines.

So, among the various forms of derivative acquisition of exclusive rights, one should distinguish between obligatory and other forms that lie outside the mainstream of classical obligations - such as the granting of exclusive rights by law, their transfer (contribution) to the common property of partners or to the authorized (share) capital, as well as transition in the order of universal or singular succession.

Granting exclusive rights by law. The right to use a protected object in his own production is granted by law to the employer in the event that he does not use the resources available to him under Art. 8 of the Patent Law rights, primarily the right to obtain a patent in one’s own name, and the employee will receive the patent (paragraph 2, paragraph 2, article 8). IN in this case However, the employer is obliged to pay the employee compensation determined on a contractual basis.

Exclusive rights to reproduce, distribute, publicly perform, communicate via cable, broadcast or other public communication of an audiovisual work, as well as to subtitling and duplicating its text, as a general rule, are granted to the manufacturer of this work (film studio, producer). Granting exclusive rights to the manufacturer entails the conclusion of contracts for the creation of a work with its authors - the director, screenwriter and composer (clauses 1, 2 of Article 13 of the Administrative Code).

In the case of performance by a group of performers, exclusive related rights to performance in accordance with clause 4 of Art. 37 Administrative Offenses are provided to the head of such a team. In this capacity, he has the right to issue permission to use exclusive performing rights by concluding a written agreement with the user. Under the contract, the user is permitted to: broadcast a performance or via cable, record a performance, broadcast a recording or via cable, and rent out a phonogram published for commercial purposes with a recording of a performance (Clause 2, Article 37 of the Administrative Code).

The right to use a protected invention free of charge, etc. object (without expanding the scope of such use) is granted by law to any individual or legal entity who, before the priority date of this object, in good faith used on the territory of the Russian Federation an identical solution created independently of its author or made the necessary preparations for this. This is the right established by Art. 12 of the Patent Law is called the right of prior use.

Transfer (introduction) of exclusive rights to the common property of partners and to the authorized (share) capital of a business partnership (company). The transfer of exclusive rights can occur within the framework of joint activities of subjects of property legal relations, both with and without the formation of a legal entity (simple partnership). Along with money, securities, and other property rights, exclusive property rights that have a monetary value can be a form of contribution to the property of a business partnership or company (clause 6 of Article 66 of the Civil Code) or to the common property of partners under a joint activity agreement (Article 1041-1054 Civil Code).

Since the introduction of exclusive rights as a contribution to the property of a business partnership or company has become widespread and has given rise to conflicting judgments in practice and in doctrine, the Plenum of the Supreme Court of the Russian Federation and the Plenum of the Supreme Arbitration Court of the Russian Federation in their resolution dated July 1, 1996 No. 6/8 “ On some issues related to the application of part one of the civil code

Russian Federation”289 explained that “such a contribution cannot be an object of intellectual property (patent, copyright, including a computer program, etc.) or “know-how”. However, the right to use such an object, transferred to a company or partnership in accordance with a license agreement, which must be registered in the manner prescribed by law, can be recognized as a contribution” (paragraph 2, paragraph 17).

This clarification removed the doubts that some authors still had regarding the very possibility of introducing exclusive rights into the authorized capital of business partnerships and companies. At the same time, it unreasonably names a patent as one of the objects of intellectual property (along with a computer program) and limits the possibility of its inclusion (by assignment) in the authorized capital. Meanwhile, a patent as a document certifying the exclusive right to an invention, utility model or industrial design (clause 2 of Article 3 of the Patent Law), and not as a thing (within the meaning of Article 128 of the Civil Code) may well be introduced through its assignment registered with Rospatent (clause 5 of article 10 of the Patent Law) as a contribution to the authorized (share) capital. As for know-how, since the owner has no exclusive rights to it, strictly following the norm of paragraph 6 of Art. 66 of the Civil Code, there is no possibility of introducing know-how as a contribution to the authorized capital. Know-how can only be a contribution to the common property of the partners under a simple partnership agreement, where, along with other types of property, the knowledge, skills and abilities of the partners are contributed (clause 1 of Article 1042 of the Civil Code).

Transfer of exclusive rights in the order of universal and singular succession. Unique civil law forms of acquiring exclusive rights to use the results of intellectual activity are universal (inheritance) and singular (reorganization of a legal entity) succession. Any property rights are inherited (Part 1 of Article 1112 of the Civil Code), including copyrights, including the right to follow in the public resale of a work. Personal non-property rights (the right of authorship, the right to a name and the right to protect the reputation of the author of a work) are not inherited. The heirs have the right only to protect these rights (Article 29 of the Administrative Code).

To the heirs of the performer or producer of the phonogram - individual the right to authorize the use of a performance, production or phonogram and the right to receive remuneration for the remainder of the validity periods of related rights established in clauses 1, 2, 3 and 4 of Art. 43 of the Code of Administrative Offenses (clause 7 of Article 43 of the Code of Administrative Offenses).

Feature of inheritance of exceptional patent rights is that the heirs acquire by inheritance both a formalized exclusive right and the right to submit an application and formalize this right themselves (Clause 6, Article 10 of the Patent Law).

When a legal entity is reorganized on the basis of a transfer deed or separation balance sheet, succession occurs in all its obligations in relation to all its creditors and debtors. Along with other rights, the objects of these obligations may include exclusive rights to the results of intellectual activity.

Exclusive rights and privatization of state and municipal property. At one time, property privatization was called a civil legal form of acquiring exclusive property rights. However, in contrast to the previously effective law “On the privatization of state and municipal enterprises,” which directly provided for the possibility of citizens and joint-stock companies (partnerships) acquiring from the state into private ownership (along with enterprises and workshops) licenses, patents and other intangible assets liquidated enterprises, the current law of December 21, 2001 No. 178-FZ “On the privatization of state and municipal property”290 does not contain such a direct indication. And this is justified. Exclusive rights are not privatized at all. They can only be acquired within the framework of traditional patent and licensing agreements, or copyright agreements or agreements on the acquisition of related and other rights.

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Civil legal methods of acquiring and using exclusive rights

1. The concept of using exclusive rights (intellectual property)

Obligatory and other civil law forms of acquisition and commercial use of exclusive rights (intellectual property) and confidential information (know-how) around the world annually generate billions of dollars in turnover. The pace of trade in patents, licenses, copyrights, related rights, trademark rights and information such as know-how is constantly growing. The fight against intellectual piracy is intensifying, with much attention being paid to industrialized countries and international organizations, in particular the World Intellectual Property Organization (WIPO) and the International Association for the Advancement of Teaching and Research in Intellectual Property.

The market reforms taking place in the Russian Federation and the interest in the effective use of the great intellectual potential of our country make it necessary to cooperate in this area with other countries within the framework of the International Agreement on Tariffs and Trade (GATT), the World Trade Organization (WTO) and the Agreement on the Commercial Use of Intellectual Property (TRIPS).

One of the functions of the institution of exclusive rights (intellectual property) is to establish a regime for the use of the results of intellectual activity and means of individualization of goods and their manufacturers (Article 138 of the Civil Code). This function is implemented by assigning to copyright holders exclusive rights to use the results of intellectual activity and equivalent means of individualization of goods and their manufacturers. Thus, the author in relation to his work has exclusive rights to use the work in any form and in any way, and the patent owner has the exclusive right to an invention, utility model or industrial design, and no one has the right to use these patented objects without the permission of the patent owner.

At the same time, in the interests of society, the law provides for fairly broad restrictions on exclusive rights. It is allowed, under certain conditions, to freely use works without the consent of the author and without payment (or with payment) of royalties (Articles 17 - 26 of the Copyright Law). The possibility of free use of objects of related (Article 42 of the Copyright Law), patent (Articles 11, 12 of the Patent Law) rights and rights to trademarks has been established. In particular, registration of a trademark does not give its owner the right to prohibit the use of this mark by other persons in relation to goods that were introduced into economic circulation directly by the owner of the trademark or with his consent.<1>. Nevertheless, the opportunity to use the results of intellectual activity with their own forces and means, including for business purposes, first and foremost belongs to the holders of exclusive (property) rights to these results.

Intellectual property as a whole (as a very large institution of civil law) and its individual institutions do not regulate the process of practical application of individual results of mental labor. The fact is that the use, for example, of inventions comes down to their design and technological (and often scientific and applied) development; production of technical documentation and prototypes, equipment and special tools; re-adjustment of equipment; organization and logistics of production; training of new personnel; financing the costs of all these needs and economic incentives for workers. There is nothing in this that would serve as a specific subject and function of patent (invention) law.

The law, however, establishes signs of the use of certain objects of exclusive rights. For example, in accordance with paragraph 2 of Art. 10 of the Patent Law, a product (product) is recognized as manufactured using a patented invention, utility model, and a method protected by a patent for an invention applied if it uses each feature of the invention or utility model included in an independent claim of the formula, or an equivalent feature. A product is recognized as manufactured using a patented industrial design if it contains all its essential features.

Providing rights holders with the possibility of monopolistic use of the objects of their exclusive rights does not exhaust the content of these rights. This expresses the difference in the content of the powers of subjects of exclusive and real rights as different categories of absolute rights. Thus, in contrast to the use of objects of real property rights, the use of exclusive rights means not only the use by the right holders of the objects of these rights themselves, but also the issuance of permission to carry out actions for their use to third parties. For example, according to paragraph 2 of Art. 16 of the Copyright Law, the exclusive rights of the author to use a work mean the right to carry out or authorize such actions as, in particular, to reproduce the work, distribute copies of the work, translate it, remake, arrange or otherwise process the work. Since all of these permissions are usually formalized by agreement, we can say that the use of exclusive copyrights is at the same time their disposal.

Strictly speaking, copyright law, patent law, related rights and the right to trademarks do not at all know the collective category of “disposal” of exclusive rights. For example, the rights of the patent holder to assign the patent and to grant any third party the right to use the protected object under a license agreement are enshrined in clause 5 of Art. 10 and paragraph 1 of Art. 13 of the Patent Law in section. IV, called "Exclusive right to an invention, utility model, industrial design." In other words, with regard to exclusive rights, all property rights are reduced to the right to use their objects. Only the forms of issuing permission to use exclusive rights to third parties or, more precisely, the methods and forms of their acquisition are differentiated.

The literature suggests that the transfer of property copyright rights should be distinguished from the transfer of these rights to another person. Transition is a broader concept: it also includes those cases when copyrights are transferred to another person against the will of the author (inheritance, transfer of rights to proprietary works, transfer of rights to audiovisual works, etc.). This opinion, in addition to its obvious tautology (“transition is when rights are transferred”) suffers from the incompleteness of the forms of derivative acquisition of exclusive rights. Civil legal relations regarding the use of exclusive rights and know-how are not limited to contractual obligations for their acquisition and use.

2. Methods for acquiring exclusive rights

Independent creation and expression in an objective form of works of science, literature and art;

Obtaining patents and certificates for inventions, utility models, industrial designs;

The creation of these works and objects in an official capacity, entailing the emergence by force of law or the fact of obtaining a patent of initial exclusive rights from employers.

A form of initial acquisition of exclusive rights is also the assignment of the right to obtain a patent. The right to obtain a patent for an object, i.e. not an exclusive right, but only the potential possibility of acquiring it, firstly, can be ceded at the stage of registration of exclusive rights. By virtue of paragraph 1 of Art. 8 of the Patent Law, a patent can be issued not only to the author of an invention or other object, but also to their legal successors, including heirs.

Secondly, the employer of the person who created the patentable object and has the original right to patent it can transfer this right under a contract to any other person.

The right to patent objects (if they are created) when performing work under a state or municipal contract, as a general rule, belongs to the performer (contractor).

Within the framework of the derivative acquisition of exclusive rights, one can distinguish such relatively independent methods as:

Assignment of an exclusive right;

Transfer (introduction) of an exclusive right;

Granting an exclusive right;

Transfer of exclusive rights.

For example, the following is allowed: assignment of a patent (Clause 5, Article 10 of the Patent Law); transfer of property copyrights (Article 30 of the Copyright Law), including to trust management (clause 1 of Article 1012, clause 1 of Article 1013 of the Civil Code); provision by the patent owner (licensor) to the licensee under a license agreement of the right to use the protected object (clause 1, article 13 of the Patent Law) or by the copyright holder (franchisor) to the user (franchisee) - a set of exclusive rights (clause 1, article 1027 of the Civil Code); transfer of copyright by inheritance (Article 29 of the Copyright Law) or any exclusive rights under a transfer deed or separation balance sheet during the reorganization of a legal entity (Clause 1, Article 59 of the Civil Code).

Establishing unambiguous criteria for delimiting the assignment, transfer (introduction), granting and transfer of exclusive rights is difficult not only because of their different understanding in doctrine and in practice, but also because of the unequal interpretation in the law itself. This determines the relative independence of some of these forms of derivative acquisition of exclusive rights. Specific forms differ primarily in the basis of acquisition (agreement, law), the scope of rights (in whole, in part) and the timing of their acquisition (forever, temporarily).

The assignment of exclusive rights usually occurs by agreement in full and forever.

The transfer is also carried out, as a rule, under an agreement (copyright, patent-licensing, trust management agreement, etc.), but partially and temporarily. At the same time, this type of transfer, such as contribution, can occur both on the basis of constituent documents and by law.

Thus, in each specific case it is necessary to identify the essence of the subject of the agreement, and not its verbal form. Rights can be granted without a time limit or temporarily.

3. Granting of exclusive rights by virtue of the instructions of the law

The right to use a protected object in his own production is granted by law to the employer in the event that he does not use the resources available to him by virtue of Art. 8 of the Patent Law rights, primarily the right to obtain a patent in one’s own name, and the employee will receive the patent (paragraph 2, paragraph 2, article 8). In this case, however, the employer is obliged to pay the employee compensation determined on a contractual basis.

In the case of performance by a group of performers, exclusive related rights to performance in accordance with clause 4 of Art. 37 of the Copyright Law are provided to the head of such a team. In this capacity, he has the right to issue permission to use exclusive performing rights by concluding a written agreement with the user. Within the framework of the agreement, the user in accordance with clause 2 of Art. 37 of the Copyright Law allows:

Broadcast or cable performance;

Recording of performance;

Broadcast or cable transmission of recordings;

4. Transfer (introduction) of exclusive rights to the common property of partners and to the authorized (share) capital of a business company (partnership)

The transfer of exclusive rights can occur within the framework of joint activities of subjects of property legal relations, both with and without the formation of a legal entity (simple partnership). Along with money, securities, and other property rights, exclusive property rights that have a monetary value can be a form of contribution to the property of a business partnership or company (clause 6 of Article 66 of the Civil Code) or to the common property of partners under a joint activity agreement (Article Articles 1041 - 1054 Civil Code).

Since the introduction of exclusive rights as a contribution to the property of a business partnership or company has become widespread and has caused conflicting judgments in practice and in doctrine, the Plenum of the Supreme Court of the Russian Federation and the Plenum of the Supreme Arbitration Court of the Russian Federation in paragraph. 2 clause 17 of its Resolution No. 6/8 of July 1, 1996 “On some issues related to the application of part one of the Civil Code of the Russian Federation” explained that “such a contribution cannot be an object of intellectual property (patent, copyright object, including a computer program, etc.) or know-how. However, the right to use such an object, transferred to a company or partnership in accordance with a license agreement, which must be registered in the manner prescribed by law, may be recognized as a contribution."

This clarification removed remaining doubts regarding the very possibility of introducing exclusive rights into the authorized capital of business partnerships and companies. At the same time, it unreasonably names a patent as one of the objects of intellectual property (along with a computer program) and limits the possibility of its inclusion (by assignment) in the authorized capital. Meanwhile, a patent as a document certifying the exclusive right to an invention, utility model or industrial design (Clause 2, Article 3 of the Patent Law), and not as a thing (within the meaning of Article 128 of the Civil Code) may well be made as a contribution to the statutory ( share capital) through its assignment registered with the intellectual property authority (Clause 5, Article 10 of the Patent Law).

As for know-how, since the owner has no exclusive rights to it, strictly following the norm of paragraph 6 of Art. 66 of the Civil Code, there is no possibility of introducing know-how as a contribution to the authorized capital. Know-how can only be a contribution to the common property of partners under a simple partnership agreement, where knowledge, skills and abilities of the partners are contributed along with other types of property (clause 1 of Article 1042 of the Civil Code).

5. Transfer of exclusive rights through universal succession

A unique civil law method for acquiring exclusive rights to use the results of intellectual activity is universal succession (inheritance, reorganization of a legal entity).

Any property rights are inherited (Part 1 of Article 1112 of the Civil Code), including copyrights, including the right of inheritance upon public resale of a work visual arts. Personal non-property rights (the right of authorship, the right to a name and the right to protect the reputation of the author of a work) are not inherited. Heirs have the right only to protect these rights (Article 29 of the Copyright Law).

According to paragraph 7 of Art. 43 of the Copyright Law, the heirs of the performer or producer of a phonogram - an individual - are given the right to authorize the use of a performance, production or phonogram and the right to receive remuneration within the remainder of the validity periods of related rights established in paragraphs 1, 2, 3 and 4 Art. 43 of the Copyright Law.

A feature of the inheritance of exclusive patent rights is that the heirs acquire by inheritance both a formalized exclusive right and the right to submit an application and formalize this right themselves (Clause 6, Article 10 of the Patent Law).

6. Exclusive rights and privatization of state and municipal property

Privatization of property was previously sometimes referred to as an independent civil law method of acquiring exclusive property rights. However, in contrast to the previously in force Law "On the Privatization of State and Municipal Enterprises in the RSFSR", which directly provided for the possibility of citizens and joint-stock companies (partnerships) acquiring from the state into private ownership (along with enterprises and workshops) licenses, patents and other intangible assets of liquidated enterprises, the current Law “On the Privatization of State and Municipal Property” does not contain such a direct indication. And this is justified. Exclusive rights are not privatized at all. They can only be acquired within the framework of traditional patent and licensing agreements or copyright agreements or agreements on the acquisition of related and other rights.

In this regard, the actual inaction of the Regulations on the privatization of objects approved by the Government of the Russian Federation is quite understandable scientific and technical sphere, in accordance with clause 4.4 of which “objects of intellectual property in the field of production (patents for inventions and industrial designs, certificates for utility models, trademarks and rights of ownership and use of appellations of origin of goods, as well as licenses for objects of industrial property and trademarks ) and other intangible assets used in economic activity and generating income are included in the value of the privatized property."

Section XII. §1. Civil legal forms of acquisition and commercial use of intellectual property and know-how

2. Methods for acquiring exclusive rights

Methods of transferring an exclusive right

Non-contractual method

Contractual method

License agreement on the transfer of intellectual property rights

Alienation of intellectual property rights

More on topic 2. Methods of acquiring exclusive rights:

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Section XII. §1. Civil legal forms of acquisition and commercial use of intellectual property and know-how

2. Methods for acquiring exclusive rights

Methods of transferring an exclusive right

Non-contractual method

Contractual method

License agreement on the transfer of intellectual property rights

Alienation of intellectual property rights

More on topic 2. Methods of acquiring exclusive rights:

Send your good work in the knowledge base is simple. Use the form below

Similar documents

We recommend other articles

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