How to agree on the patent transfer fee
The patent transfer fee is generally agreed between the transferor and the transferee. According to the market The market price is negotiated between the two parties, and there is no specific unified standard.
1. The transferor delivers materials to the transferee
To China All patent application documents submitted by the Patent Office, including description, claims, drawings, abstract and abstract drawings, request, statement of opinion, approval decision on changes in bibliographic matters, restoration of rights after loss of rights, power of attorney, etc. (If you are applying for PCT, you must also include all PCT application documents).
All documents issued by the China Patent Office to the transferor, including acceptance notice, intermediate documents, authorization decision, patent certificate and copies, etc.
The patent implementation license contract that the transferor has licensed to others to implement, including the attachments to the contract (that is, the technology, process and other documents related to the implementation of the patent).
Documents proving the validity of the patent right issued by the China Patent Office. Refers to the latest patent annual fee payment receipt (or the patent legal register of the Patent Office), in the request for revocation or invalidation of the patent right, the decision made by the China Patent Office or the Patent Reexamination Board or the People's Court to maintain the validity of the patent right, etc.
Transfer approval document from the superior competent department or the relevant competent department of the State Council.
2. Time, place and method of delivery of data
Transfer Party shall submit all the above information to the transferee in person, registered mail or air transport, and submit the list of information to the transferee in person, mail or fax, and submit the air waybill in person or by mail. to the transferee.
The delivery location of all information is the location of the transferee or the location agreed upon by both parties.
三, Patent implementation and implementation licensing situation and disposal methods
Before the transfer contract is signed, the transferor has already implemented the patent, and the transfer contract can stipulate that after After the transfer contract is signed and becomes effective, the transferor may continue to implement or stop the implementation of the patent. If there is no agreement in the contract, the transferor should stop implementing the patent.
Before the signing of the transfer contract, the rights and obligations of the license contract that the transferor has allowed others to implement will be transferred to the transferee from the effective date of the signing of the transfer contract.
IV. Transfer fees and payment methods
Involved patent rights The transfer fee shall be paid in one lump sum. From the date when the contract comes into effect, or after the patent office announces it, the transferee shall remit the entire transfer fee to the transferor's account, or remit it in cash to (or pay in person) the transfer fee. square.
The transfer fee for the patent rights involved shall be paid in installments. The transferee will transfer part of the patent right from the effective date of the contract or after the patent office announces it. The transfer fee will be remitted to the transferor's account; after the transferor delivers all the information, the transferee will remit the remaining transfer fees to (or pay in person) the transferor;
Payment The method is bank transfer (or collection, cash payment, etc.), and the cash payment location is generally the place where the contract is signed.
5. Treatment of patent rights being revoked and declared invalid
According to Article 50 of the Patent Law, after the transfer contract is established, when the transferor’s patent rights are revoked or declared invalid, if there is no obvious violation of the principle of fairness and the transferor has no malicious intent to cause losses to the transferee, the transferor shall The transfer fee will not be returned to the transferee, and the transferee will not return all the information.
If the signing of the transfer contract obviously violates the principle of fairness, or the transferor intentionally causes losses to the transferee, the transferor shall return the transfer fee.
Others file a request to the Patent Office to revoke the patent right, or request the Patent Reexamination Board to declare the patent right invalid, or are dissatisfied with the decision of the Reexamination Board (for invention patents) When the people's court brings a lawsuit, after the transfer contract is established, the transferee shall be responsible for the defense and bear the resulting requests or litigation costs.
6. Transition Period Terms
After the transfer contract is signed and takes effect until the date of registration and announcement by the Patent Office, the transferor shall maintain the validity of the patent. During this period, the annual fee and renewal fee to be paid (for December 1992 Utility models and designs applied before the 31st day) shall be paid by the transferor.
After the transfer contract is registered and announced in the Patent Office, the transferee is responsible for maintaining the validity of the patent. Such as handling matters such as patent annual fees, renewal fees, administrative revocation and invalidation requests, and responses to invalidation lawsuits. (It can also be agreed that after the transfer contract is signed and becomes effective, all costs for maintaining the validity of the patent right will be borne by the transferee. Party pays.)
During the transition period, if the transferor or transferee is unable to perform the contract due to force majeure, the transfer contract will be terminated.
7. Taxes
For both the transferor and the transferee to be Chinese citizens or a legal person, the transfer fee involved in the transfer contract shall be taxed by the transferor in accordance with the tax law of the People's Republic of China.
For the transferor who is an overseas resident or The transferor shall pay tax to the Chinese tax authorities in accordance with the Tax Law of the People's Republic of China and the Income Tax Law of the People's Republic of China on Foreign-Invested Enterprises and Foreign Enterprises.
8. Breach of contract and claims
To the transferor:
The transferor refuses to deliver the contract provisions When handling the patent transfer procedures, the transferee has the right to terminate the contract and require the transferor to return the transfer fee and pay liquidated damages.
The transferor is not justified Reasons include late delivery of materials to the transferee to handle patent transfer procedures (including making changes to bibliographic matters to the Patent Office). For every one week overdue, liquidated damages will be paid. For two months overdue, the transferee has the right to terminate the contract and require the return of the transfer fee. .
For the transferee:
The transferee refuses to pay the transfer fee, and the transferor has the right to To terminate the contract, all information is required to be returned, and compensation for losses or liquidated damages is required.
The transferee pays the transfer fee overdue and will pay liquidated damages for each overdue (time) , two months overdue, the transferor has the right to terminate the contract and require payment of liquidated damages.
9. Dispute Resolution
If a dispute arises between the two parties during the performance of the contract, they shall Transfer the contract terms, negotiate amicably, and resolve by yourself.
If the two parties are unable to resolve the dispute through negotiation, they shall submit it to the patent management authority where the transferee is located or where the contract was signed for mediation. If they are not satisfied with the mediation result, they may file a lawsuit in the People's Court.
If a dispute arises between the two parties and cannot be reconciled, they will file a lawsuit in the People's Court.
If a dispute arises between the two parties and cannot be reconciled, they shall request an arbitration committee for arbitration.
10. Effectiveness of the contract
After both parties to the transfer contract sign That is to say, it is binding on both parties. The contract has legal effect from the date when the Patent Office registers and announces the "Changes in Bibliographic Matters" made by both parties.
