What issues should be paid attention to when transferring patent rights?

In practice, many of us may come across issues such as what should be paid attention to when transferring patent rights, but because we don’t know much about it, many things are not very clear. Regarding this issue, the editor of Legal Savior Network has compiled the following knowledge points. Let’s learn about it together.

What issues should be paid attention to when transferring patent rights?

Patent rights As a kind of property right, it can be transferred, but inventions and creations as the subject of patent rights are intangible. This "intangible" nature makes it more likely that disputes will arise during the transfer process than tangible assets. In addition to meeting the requirements In addition to the general requirements of contract law, you should also pay attention to the following issues:

1. Confirm the type and legal status of the patent right

According to the provisions of China’s Patent Law, patents include inventions, utility models and designs. The authorization of utility model and design patents does not go through substantive examination. Therefore, the "stability" of its patent rights is relatively poor. The transferee should fully understand the type of patent rights being transferred, weigh the potential risks of the transfer, and when necessary, require the patentee to provide a search report issued by the State Intellectual Property Office.

The transferee should conduct a legal status search to confirm that the patent to be transferred is a valid patent and confirm the remaining validity period of the patent right.

2. Pay attention to the identity of the patentee and assignee

For the assignee, attention should be paid to whether the assignor of the patent right is the legal holder of the patent, whether there are other co-owners of the patent right, whether it is a service invention, and whether the assignor of the patent right is a State-owned enterprises, if they are state-owned enterprises, need to complete the procedures for the transfer of state-owned assets in accordance with the provisions on the transfer of state-owned assets in the "Enterprise State-owned Assets Law of the People's Republic of China".

Some technologies involved in patent rights may be of great significance to national interests. If such technologies are transferred to foreigners, it may be harmful to our country. Therefore, according to the provisions of the Patent Law, when a Chinese unit or individual transfers patent rights to foreigners, foreign enterprises or other foreign organizations, it must go through the procedures in accordance with the provisions of relevant laws and administrative regulations. As referred to in the Patent Law, “law,"Administrative regulations" mainly refer to the "Foreign Trade Law" and the "Technology Import and Export Administration Regulations".

3. Sign a formal written transfer contract

Patent right is actually a kind of property right. However, inventions and creations that are the subject of patent rights are intangible and cannot be actually possessed like tangible property. Therefore, the ownership of patent rights is based on the registration book of the State Intellectual Property Office. Therefore, the Patent Law stipulates that the transfer of patent rights The parties should enter into a written contract and register it with the State Intellectual Property Office in a timely manner. It should also be noted that the transfer of patent rights takes effect from the date of registration.

4. Clarify the handling method after a patent is declared invalid

Article 47 of China's Patent Law stipulates that the patent right declared invalid shall be automatically The patent transfer contract that has been performed does not have retroactive effect, and the patent transfer fee will not be refunded. However, if it clearly violates the principle of fairness, it shall be refunded in whole or in part.

From the perspective of the transferee, the transferred patent rights are not necessarily "absolutely" valid. Especially for utility models and designs that have not undergone substantive examination, there is a certain possibility of being declared invalid. risk. Once declared invalid, the transferred patent right will lose its meaning. According to the above provisions of the Patent Law, the original patentee is not obliged to return the patent transfer fee. In the absence of other agreements, the transferee shall Bear the responsibility for the patent being declared invalid. Therefore, before signing a patent transfer contract, the transferee should fully consider factors such as the "stability" of the patent right to be transferred, the patent transfer fee and the economic benefit prospects of patent implementation, and based on the specific In the transfer contract, the patentee shall agree with the patentee on different handling methods after the patent is declared invalid.

5. Understand the implementation history

The patent to be transferred may have already signed a license implementation contract with other people. If the previous license contract has not been registered or filed with the State Intellectual Property Office, it will be subject to The transferor has the right to require the licensee of the patent to stop implementation. If the license contract has been registered or filed with the State Intellectual Property Office and made public, the licensee of the patent can enjoy the right to implement the patent, and the transferee The person has no right to stop the licensee's implementation. Therefore, before signing a patent transfer contract, the transferee should carefully understand whether the patentee hasThe patent has signed a license implementation contract with others. In addition, you should also know whether the patentee has implemented the patent to be transferred by itself, and clarify in the patent transfer contract the implementation of the patent before the transfer and the legal responsibilities and solutions for possible consequences. method.

6. Agreement on infringement of the legitimate rights and interests of others

The implementation of a patent may potentially infringe the legal rights of others. For example, the implementation of a design patent may infringe the copyright, portrait rights, etc. of others. Invention and utility model patents may be an improvement on the basic patent proposed by others. If the implementation of the improved invention cannot be The license of the patentee of the basic patent may infringe its patent rights. Therefore, in the patent transfer contract, especially for the transferee, it should be stipulated how to bear infringement liability when the above situation occurs.

The above is the relevant knowledge compiled by the editor of Hualu for you on the issue of "what issues should be paid attention to in the transfer of patent rights". This website provides you with professional lawyers Consultation, if you still have any questions, welcome to the Legal Savior Network for consultation.