Notes on patent transfer
Patent transfer is a cumbersome legal process. If the parties involved are not familiar with it, they can entrust a patent attorney to complete the process. When handling the transfer, you need to pay attention to the following points:
1. Transfer Rules that need to be followed before:
(1) Avoid blindly expanding the value of patents - for the transfer price of patent rights, The principle should be that the transaction can be concluded, otherwise the cooperation is likely to fail;
(2) Avoid seeking speed - patent transfer is a legal process, it is recommended It is best to entrust relevant industry insiders to carry out relevant operations;
(3) Put cooperation first, patent development is important for society , has benefits and contributions to life. A patented technology with certain technical content and market capacity can only be technology before it is transformed into productivity. Therefore, industrialization is the highest standard for benefiting society and mankind;
(4) Keep records of the transfer process as much as possible, which is very important for subsequent issues and income distribution; during the transfer Beforehand, do not easily carry out operations such as value appraisal, especially do not easily carry out such operations based on the requirements of the other party. If you really need to conduct an evaluation, try to clarify the principles and proportions of the evaluation costs; do not easily hand over the technology before the transfer procedures are fully completed. Specific information such as materials and related drawings.
2. The transferor shall deliver materials to the Transferee
All patent application documents submitted to the China Patent Office, including description, claims, drawings, abstract and abstract drawings, request, and statement of opinions As well as the approval decision on changes in bibliographic matters, restoration of rights after loss of rights, power of attorney, etc. (if the application is PCT, all PCT application documents must also be included)
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 related to the implementation of the patent, Process and other documents)
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.
3. Delivery materials Time, place and method
Time to deliver information
Method and place of delivery of information
The transferor shall deliver all the above information in person, by registered mail or by air transport, etc. Submit it to the transferee in person, and submit the information list to the transferee in person, by mail, or by fax, and submit the air waybill to the transferee in person or by mail.
The delivery location of all information is the location of the transferee or the location agreed upon by both parties.
4. Patent implementation and implementation licensing situation and disposal methods
In the transfer contract Before signing, the transferor has already implemented the patent, and the transfer contract can stipulate that after the transfer contract is signed and becomes effective, the transferor can continue to implement or stop implementing 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 Transferee.
5. Transfer fee and payment method
The transfer fee for the patent rights involved 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 will remit the entire transfer fee to the transferor's account, or Remit it to the transferor in cash (or hand it over in person).
The transfer fee for the patent rights involved shall be paid in installments. From the effective date of the contract, or after the patent office announces it, the transferee will remit part of the transfer fee to the transferor's account; after the transferor delivers all the information, the transferee will remit the remaining transfer fee to (or pay in person) Transferor;
The payment method is bank transfer (or collection, cash payment, etc.), and the cash payment location is generally the place where the contract is signed.
6. Treatment of patent rights being revoked and declared invalid
After the transfer contract is established, if the transferor's patent rights are revoked or declared invalid, if there is no obvious violation of the principle of equity and the transferor has no malicious intent to cause losses to the transferee, the transferor shall not The transfer fee will be returned to the transferee, and the transferee will not return all the information.
If the signing of the transfer contract clearly violates the principle of fairness, Or if the transferor intentionally causes losses to the transferee, the transferor shall return the transfer fee.
When another person files a request to the Patent Office to revoke the patent right, or requests the Patent Reexamination Board to declare the patent right invalid, or is dissatisfied with the decision of the Reexamination Board (for invention patents) and files a lawsuit in the People's Court, After the transfer contract is established, the transferee shall be responsible for the defense and bear the resulting requests or litigation costs.
7. 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 the period, the annual fees and renewal fees (for utility models and designs applied before December 31, 1992) 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 patent annual fees, renewal fees, administrative revocation and invalidation requests, and responding to invalidation lawsuits, etc. matters. (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 shall be paid by the transferee.)
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.
8. Taxes
9. Breach of contract and claims
For the transferor:
If the transferor refuses to hand over all the materials stipulated in the contract and go through 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 exceeds the deadline without justifiable reasons Deliver materials to the transferee to handle the patent transfer procedures (including making changes to the bibliographic matters to the Patent Office). For each 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.
To the transferee:
If the transferee refuses to pay the transfer fee, the transferor has the right to terminate the contract, demand the return of all information, and demand compensation for its losses or payment Liquidated damages.
If the transferee pays the transfer fee overdue, liquidated damages will be paid for each overdue (time). If it is overdue for two months, the transferor has the right to terminate contract and require payment of liquidated damages.
10. Dispute Resolution
If any dispute arises between the two parties during the performance of the contract, they should resolve it themselves through friendly negotiation in accordance with the terms of the transfer contract.
If the two parties cannot resolve the dispute through negotiation, they shall submit it to the patent administration authority at the place where the transferee is located or where the contract was signed for mediation. If they are not satisfied with the mediation result, File a lawsuit with the People's Court.
If the two parties have a dispute and cannot reconcile, 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.
The above are some relevant matters needing attention on patent transfer summarized for you by the editor of Legal Savior Network. I hope it will be helpful to you. . Of course, if you still have some confusion or want to know more comprehensively, you can go to the Legal Savior website to find our online lawyers for legal consultation.
