1. What are the types of patent implementation licenses
Patent implementation licenses are divided into exclusive There are three types of implementation license, exclusive implementation license and general implementation license. Different license types determine the scope of licensed use, the number of licensees and the different litigation rights.
1. Exclusive license. It means that within a certain period of time and in a certain area, the patentee only authorizes the licensee to implement its patented technology, and no longer authorizes any other enterprise to use the technology. At the same time, the patentee himself cannot use the patented technology. In fact, the licensee has obtained the monopoly rights of the patented technology within a certain period of time and within a certain scope. Therefore, for this kind of implementation license, the licensee usually has to pay a high licensing fee.
2. Exclusive license to use. It means that within a certain period of time and in a certain area, the patentee authorizes the licensee to implement its patented technology and no longer authorizes a third company to use the technology, but the patentee still retains the right to implement the patented technology.
3. General permission to use. It means that within a certain period of time and in a certain area, the patentee authorizes the licensee to implement its patented technology. The patentee also reserves the right to implement the patent himself, and can also license others to implement the patent. This licensing method will create multiple competitors in the market, so the license fee will be relatively low compared to an exclusive license.
Due to different license types, each has different litigation rights. According to our country’s judicial interpretation, when a patent infringement occurs, the licensee who exclusively implements the license contract shall An application may be filed with the People's Court separately; the licensee of an exclusive license contract may file an application if the patentee does not apply. The licensee under a general implementation license contract can only file a lawsuit in court with the authorization of the patentee.
According to the "Interpretation of the Supreme Court on Applicable Legal Issues in the Trial of Technology Contract Dispute Cases", if the two parties have not agreed on the type of implementation license or the agreement is unclear , it is deemed as a general implementation license.At the same time, the enterprise must clearly stipulate in the license contract whether the licensee has the right to sublicense. If the right to sublicense is stipulated, such sublicense is usually regarded as an ordinary license.
2. What is the term of the patent license contract
my country The Civil Code stipulates that a patent license implementation contract is only valid during the existence of the patent right. During the duration of patent rights, my country's Patent Law clearly stipulates that the term of invention patent rights is 20 years, and the term of utility model patent rights and design patent rights is 10 years, both calculated from the date of application.
The patentee shall pay annual fees starting from the year when the patent right is granted. If the annual fee is not paid in accordance with the regulations, the patent right shall be terminated before the expiration of the term. Therefore, if you want your patent rights to continue, you must pay an annual fee to the State Intellectual Property Office every year. At the same time, when licensing the use of patents, both parties can also make an agreement on the payment of annual fees; if the two parties have not agreed on the payment of annual fees or the agreement is unclear, according to the "Supreme Court's Legal Issues Applicable in the Trial of Technology Contract Dispute Cases" According to the provisions of "Interpretation"), these obligations should be borne by the transferor of the patent license contract, that is, the patentee.
Therefore, when signing a licensing contract, you should first understand the status and period of the patent right. If the patent period has expired, the patent right has been terminated or has been declared invalid , the patented technology has entered the public domain and can be used by anyone for free, so the license contract is invalid; if the patent right is valid, the remaining years of the patent right should be considered. Generally speaking, the shorter the remaining years, the better the license. The lower the usage fee, and vice versa.
3. Filing of Patent Implementation License Contract
my country's "Patent The Implementing Rules for the Law of the People’s Republic of China (2001) stipulates that a patent license contract concluded between a patentee and others must be filed with the patent administration department of the State Council within 3 months from the date of the contract’s effectiveness. A contract is valid as long as both parties reach an agreement and does not violate legal provisions. Registration is not a necessary condition for the contract to take effect, but a registered license contract can be used against third parties.
4. Avoid "invalid clauses" in licensing contracts
Article 850 of my country's Civil Code stipulates that technology contracts that "illegally monopolize technology and hinder technological progress" are invalid, "Interpretation of the Supreme Court on Applicable Legal Issues in the Trial of Technology Contract Dispute Cases"》) listed the following situations as "illegal monopoly of technology and hindering technological progress", which should be avoided when concluding a contract:
1. Restricting one party from the subject matter of the contract conduct new research and development on the basis of the technology or restrict its use of the improved technology, or the conditions for the exchange of improved technology between the two parties are unequal, including requiring one party to provide its self-improved technology to the other party free of charge, non-reciprocal transfer to the other party, free of charge Exclusively or share the intellectual property rights of the improved technology;
2. Restrict one of the parties to obtain technology similar to or competing with the technology provider from other sources;
3. Impeding one party from fully implementing the technology that is the subject of the contract in a reasonable manner based on market demand, including clearly unreasonable restrictions on the technology recipient's implementation of the technology that is the subject of the contract to produce products or provide services. Quantity, variety, price, sales channels and export markets;
4. Require the technology recipient to accept incidental conditions that are not essential for implementing the technology, including purchasing non-essential Technology, raw materials, products, equipment, services and acceptance of non-essential personnel;
5. Unreasonable restrictions on technology recipients purchasing raw materials, parts, products or The channels or sources of equipment, etc.;
6. The technology recipient is prohibited from raising objections to the validity of the technical intellectual property rights that are the subject of the contract or attaching conditions to the objections.
Enterprises should pay attention to the above details when signing a license agreement.
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