Does a patent license contract have to be filed?
A patent license contract does not have to be filed, but a license contract needs to be concluded.
Article 12 Any unit or individual that exploits another person's patent shall enter into an implementation license contract with the patentee and pay patent royalties to the patentee. The licensee has no right to allow any unit or individual other than those specified in the contract to exploit the patent.
Notes for licensors and licensees
1. Subject qualification review: both parties to the contract should Investigate the other party's asset status, credit status, and whether it has the legal qualifications to sign such a contract.
2. Both parties should clarify the nature of the contract and reasonably define the rights and obligations of both parties.
3. The parties should clearly agree on the method to be used for the acceptance of the patented technology. They can agree on the use of appraisal meetings, expert evaluations, or on the basis of approval by the licensee. Passed for acceptance.
4. The patent technology level is high and the professionalism is strong. Therefore, when signing a contract, the contract language must be accurate and clear, and some key terms must be included. Terms should be defined or explained as necessary to avoid ambiguity. Contract terms must be stated in a complete and standardized manner.
5. The parties should clearly agree that for patent implementation licensing, all technical content involved in the patent specification and the scope of protection of the rights, including process design, technical reports, process Formulas, documents, drawings and other related content.
6. As long as the contract stipulates damages or compensation for losses due to breach of contract, the specific amount or calculation method must be agreed upon. When agreeing on a stipulated amount for breach of contract, the amount cannot be too high or too low. If the stipulated amount is too low, the loss will not be compensated. If the stipulated amount is too high, there will be factorsThe amount is too high and cannot be realized without legal support. Generally speaking, the agreed amount of damages for breach of contract cannot exceed the amount of the subject matter of the contract. If one party's losses indeed exceed the subject matter of the contract, it can be directly agreed to compensate for the loss.
7. Both parties should agree in the contract that matters not covered in the contract shall be carried out in accordance with relevant laws and regulations. If there are no provisions in laws and regulations, the two parties may separately negotiate and sign a written supplementary agreement. As an attachment to this contract, the supplementary agreement has the same legal effect as this contract.
8. Both parties should clarify what material carrier (such as drawings, documents, disks, etc.) the subject matter of the contract will be used for.
9. Both parties to the contract should conduct research on the latest regulations and national policies in the industry that have been recently promulgated, and provide guidance on signing the contract.
10. The parties should agree that if one or both parties violate the terms of the contract during the validity period of the contract, the party who violates the contract shall be liable for the breach of contract according to the seriousness of the violation. Agree on liability and pay a certain amount of liquidated damages to the other party.
11. Both parties should clearly agree on the time for the transferor to submit the patented technology.
12. The statute of limitations for disputes arising out of patent licensing contracts is two years, which is related to the contract performance period.
13. In litigation, you can ask the other party to bear all losses, and do not voluntarily give up any litigation claims that are beneficial to you.
14. The parties shall agree on the basis and evaluation method for the patented technology to achieve the above indicators, such as industry standards, expert appraisal or other methods as the basis and evaluation criteria.
15. The parties should clearly agree on the place of performance or an operable method that can determine the place of performance.
16. The parties should clearly agree on the specific standards, indicators, parameters, data, etc. to be adopted for acceptance or should meet international standards, national standards, industry standards, etc.
17. When a penalty for breach of contract is agreed upon, the parties shall clearly agree that the amount of damages caused to the other party due to one party's breach of contract exceeds the penalty for breach of contract. How to calculate: Should the penalty for breach of contract be regarded as the amount of loss compensation, and no additional compensation for losses should be calculated; or the shortfall of the penalty for breach of contract still needs to be compensated.
18. The parties to the contract should also state in the contract that they have no objection to the understanding of the terms.
19. The statute of limitations for disputes arising out of a patent licensing contract is two years. The parties must assert their rights within two years. When the other party fails to perform its contractual obligations, the statute of limitations shall be A reminder letter shall be issued and evidence of the reminder shall be retained.
20. The contract not only stipulates the ownership and sharing of subsequent improved technical results, but also stipulates the appraisal agency and appraisal procedures for subsequent technologies. Both parties should reach an agreement on whether technical appraisal should be conducted by a specialized technical appraisal center or by relevant experts for technical consultation, and should be specifically stipulated in the contract.
21. The conditions for the termination of the contract agreed by both parties should comply with the relevant provisions of the law.
22. When the licensor is the patentee and other non-patentee, the change and termination of the contract must be unanimously agreed by the patentee and other non-patentee. can be lifted.
23. Depending on the carrier of the patented technology, the parties should clearly agree on the delivery method to be used for transfer, such as transportation, express delivery, fax, email, etc.
24. The parties to the contract should realize that a conditional contract will only take effect when the conditions are met.
25. When a party to a contract may be unable to perform a patent licensing contract due to a breach of contract by a third party, it should actively take remedial measures to avoid further losses.
26. Patent-related information such as the patent application date, application number, patent number and the validity period of the patent right should be clearly recorded in the contract.
27. The parties should, in accordance with the principle of mutual benefit, clearly stipulate in the patent license contract the ownership and sharing method of the technical results of subsequent improvements using the patented technology. Specifically: both parties will provide their respective technological improvement results to the other party in a timely manner and free of charge, or they will be owned by one party or other sharing methods.
28. If the party concerned has made a contribution to the improvement, evidence should be preserved to prove that the party has made a contribution to the improvement.
29. Notes on acceptance
①The parties should clearly agree on the acceptancecollection location, such as at the Licensor’s place of work or at the Licensee’s location.
② No matter what method is agreed upon in the contract for acceptance, it should also be agreed that the accepting party shall issue an acceptance certificate and documents in duplicate, which shall be kept by both parties.
③The parties to the contract should agree on the acceptance period. After the licensor delivers the patented technology, the licensee shall conduct acceptance inspection within a reasonable period of time and notify the other party of the acceptance results in a timely manner.
④ Both parties should actively seek solutions after a dispute arises due to failure in the initial inspection and cannot wait passively. The contract should stipulate that after the initial acceptance of the contract subject fails, several acceptance assessments will be conducted to determine who is responsible and how the acceptance fees will be shared.
30. The parties should clearly agree on the total transaction amount of the technology contract.
31. If one party’s organization is dissolved, the bearer of its contractual rights and obligations
① Both parties in the contract It should be clearly stipulated in the contract that if one party's organization is dissolved during the performance of the contract, the bearer of its contractual rights and obligations: If one party is in the change period of dissolution when the contract is concluded and the successor of its rights and obligations can be foreseen, it should be clearly stated in the contract Agree on a specific successor name. At the same time, it must be stipulated that one party should promptly notify the other party of the dissolution of the organization and the liability for breach of this notification obligation.
② During the performance process, both parties should pay attention to the changes in the counterparty's subject. If there is a change in the dissolution situation, they should pay attention to which legal person or organization will succeed its rights and obligations, and Relevant evidence should be collected to prove the above facts.
32. Signature and seal: Both parties should sign clear and unmistakable signatures, and if the party is an organization, they should also affix their official seal.
33. The parties should clearly agree on what to do when the patent right is revoked or declared invalid, and which party will bear the responsibility.
34. The parties should clearly agree on the scope of force majeure, the notification method and proof method after encountering force majeure, whether both parties can terminate the contract due to force majeure, and whether the performance can be caused by force majeure. Questions include asking for compensation, under what circumstances the contract should be terminated, etc.
35. If the domicile of both parties changes after the contract is signed, the other party should be notified and the evidence should be retained.
36. When the patent implementation license contract signed by both parties coexists with other labor contracts in one agreement, the respective proportions of the patent implementation fee and labor remuneration should be clearly agreed upon.
37. To terminate the contract, the other party should be notified in writing and the evidence should be retained.
38. The patent license contract is revocable because it is unfair. , the revocable period is one year from the date when the reason for revocation is known or should be known, and the parties must assert their rights within one year.
39. The parties should clearly agree When a quality defect is found in the patented equipment installed by the user, the method of determining the defect and assuming responsibility.
40. Dispute resolution
①The parties may agree to choose one of the four resolution methods of negotiation, mediation, arbitration, or litigation.
②If the parties agree to litigate , it can only be agreed that the court shall have jurisdiction over the place where the defendant is domiciled, the place where the contract is performed, the place where the contract is signed, the place where the plaintiff is domiciled, and the place where the subject matter of the contract is located, and only one of the courts can be agreed to have jurisdiction. If the agreement is not clear, two or more courts are chosen to have jurisdiction, or If a court other than the above five courts is agreed, or both arbitration and litigation are agreed, such dispute resolution clauses are invalid.
③If arbitration is agreed, it should be made clear Agree on the arbitration institution and arbitration matters.
41. When both parties entrust lawyers or others to handle contract matters on their behalf, they should not be given excessive rights to investigate evidence on their behalf, or to Matters such as appearing in court, conciliating on your own, accepting mediation, admitting, changing, and abandoning claims on your behalf, filing counterclaims, filing appeals, applying to withdraw a lawsuit, applying for execution, signing relevant documents on your behalf, and transferring power of attorney cannot all be left to lawyers or other agents. Prevent the agent from colluding with the other party to harm the interests of the principal.
42. Both parties should stipulate the authority of their respective internal personnel and prohibit unauthorized personnel from abusing the company's official seal, signature, etc. When performing various contractual matters with the other party, in particular, you must not make any expression of intention that is inconsistent with the content of the contract and your own interests.
43. The so-called restrictive clauses are the transfer agreements agreed in the contract. The scope of the patent or the use of the patented technology by the person or assignee. Reasonable restrictive clauses are protected by law. The parties have the right to determine the nature of the contract based on the actual situation and agree on the scope and extent of the use of the technology by both parties.For example: in a sub-sale license contract, the transferee has the right to re-transfer the technology; in an exclusive license contract, not only can the transferor not be able to re-transfer, but he or she may not even use the technology within a certain range.
44. After the patent license contract is concluded, it should be filed with the State Intellectual Property Office within 3 months from the effective date of the contract.
45. Both parties to the contract should agree in the contract on the list and number of copies of relevant materials to be submitted for inspection.
46. After a dispute arises between the two parties, when the patented technology needs to be appraised, it should first be verified by an institution agreed upon by both parties, and the unilateral submission for inspection should be confirmed by the other party. Test effectiveness.
47. Both parties to the contract should indicate in the contract that the main contract, relevant vouchers, relevant accounting information, etc. are attachments to this contract. After the contract is signed, the contract, main contract, relevant vouchers, relevant accounting information and other contract attachments shall be properly kept.
48. Both parties to the contract should correctly distinguish the relationship between the unit and the person in charge of the unit, and should clearly understand that the person in charge of the unit cannot represent the unit in his own name.
49. The parties should clearly agree on the standards and differences between partial improvements and substantive improvements.
50. Things to note at the end of the contract
① Both parties should indicate a clear and accurate signing time at the end of the contract .
② It should be stated in the contract how many copies of this contract there are and how many parties hold them.
51. Force majeure
① When force majeure occurs, one party shall promptly notify and prove it to the other party as agreed.
② After force majeure occurs, one party shall promptly notify the other party in accordance with the contract and retain performance evidence when proving it.
52. The contract should clearly stipulate that in the event of a division of one party during the performance of the contract, the bearer of its contractual rights and obligations: If one of the parties is in the process of corporate division when signing the contract During the change period and the counterparty can foresee that the organization will be divided after the change, the specific bearer of the rights and obligations of the contract after the separation should be clearly stipulated in the contract: whether the post-division organization will jointly bear joint and several liability for the rights and obligations of the contract, or whether organized by one ofCommitment: When the contract is concluded, it cannot be foreseen whether one party will be separated. In order to avoid disputes, the contract can also stipulate in the contract the distribution principle of the contractual rights and obligations of one party if the party is separated.
53. Both parties should properly restrain their respective internal personnel to prevent employees from being bribed by the other party to act unfavorably to themselves, and they should not use improper means to bribe the other party's personnel for their own purposes. Avoid performance of contractual obligations.
54. Pay attention to confidentiality matters.
① Responsibility for confidentiality: The parties should clearly agree that both parties have the obligation to keep the patented technology confidential, and neither party shall disclose it without authorization, otherwise it will bear corresponding liabilities. However, if the contract is transferred in the form of a general license, then the transferor's licensing of the patented technology to others does not constitute a breach of confidentiality obligations.
②Confidential objects: Both parties to the contract should clearly agree on the confidentiality objects. The confidentiality objects should be detailed and listed in the form of examples. They should also agree on the confidentiality objects under specific circumstances. some exceptions.
③Confidentiality scope: Both parties to the contract should clearly agree on the scope of confidentiality, and should agree on the scope of confidentiality within those regions and industries, as well as some exceptions that should be agreed upon for certain needs. matter.
④ Both parties to the contract should strictly limit the scope of personnel who know the trade secrets, and specify them by enumeration or other means.
⑤Confidentiality methods: The parties should clearly agree on the specific methods and measures to be adopted to implement confidentiality behaviors.
⑥Confidentiality period: The parties should clearly agree on a specific confidentiality period for confidentiality matters in the patent license contract, and cannot just have an approximate number without specifying a specific time period. , time point.
⑦ Independence of the confidentiality clause: The parties can agree that regardless of whether the contract is changed, terminated or terminated, the confidentiality clause of the contract will continue to be effective without its restrictions. Should continue to bear the agreed confidentiality obligations.
⑧If the content of the contract involves national security and major interests and other national scientific and technological secrets that need to be kept confidential, the scope, confidentiality level and confidentiality period of the secret matters should be stated in the contract and the confidentiality obligations assumed by each party.
It can be seen from the text that when signing a contract, you must pay attention to the relevant details and provisions of the relevant clauses, and strictly abide by the provisions of the law. Otherwise, once Disputes arise,It will cause unnecessary trouble for others and yourself. Welcome everyone to come to the Legal Savior Network to consult on legal issues.
No comments yet. Say something...