The concept of patent transfer contract
The patent transfer contract is a type of technology transfer contract, which refers to the parties ( The transferor) transfers its invention-creation patent rights to the transferee, and the transferee pays the corresponding price.
(1) Review of the validity of the patent transfer contract
Mainly examine whether the transferor belongs to the patent right The legal right holder, the validity of the patent, that is, whether it has passed the substantive examination, whether there is a possibility of being applied for revocation or being declared invalid.
(2) Review of the terms of the patent transfer contract
1. It should be stated that the transferor owns a certain Patent rights
The transferor must be consistent with the legal document of the transferred patent. The patent should indicate the patent number, publication number, announcement number, application date, and authorization date. , publication date, and validity period of the patent right, and must be consistent with the legal document of the transferred patent. At the same time, it should be stated that the transfer involves transferring the patent and the transferee's intention to transfer the patent.
2. When the transferor delivers materials to the transferee, the materials to be delivered should be clearly and thoroughly listed
For example, all patent application documents submitted to the China Patent Office, all documents issued by the China Patent Office to the transferor, the patent implementation license contract that the transferor has allowed others to implement, and documents proving the validity of the patent rights issued by the China Patent Office. , the transfer approval documents of the superior competent department or the relevant competent department of the State Council, etc., can be listed in the form of attachments after the agreement of this article.
3. Time, place and method of delivery of materials
① Both parties can negotiate and agree on the delivery time. In practice, there is an agreement to deliver after the transfer fee is paid, and there is also an agreement to deliver after the contract comes into effect. If it is a partial delivery, attention should be paid to the delivery time of the remaining materials to avoid the transferor's delay in delivery, which will affect the implementation of the patent.
② The delivery method can be delivered in person, by registered mail or by air. Since there are many patent documents and involve trade secrets, in order to avoid disputes, it is recommended that the method of delivery be in person and the list of documents be included. Deliver together with the materials and verify signatures.
③The delivery location is the location of the transferee (transferor) or the location agreed upon by both parties.
4. Patent implementation and implementation licensing situation and disposal methods
Because before the patent is transferred, the transfer People are often already implementing or permitting others to implement the patent. Therefore, it is necessary to clearly agree on the circumstances and disposal methods of patent implementation and implementation licensing. In practice, generally if the transferor has already exploited the patent before the signing of this contract, the transferor may continue to exploit or stop exploiting the patent after the signing of this contract becomes effective. For a license contract that the transferor has allowed others to implement before the signing of this contract, the rights and obligations will be transferred to the transferee from the effective date of signing of this contract.
5. Transfer fee and payment method
Both parties should clearly agree on the transfer fee and the currency should be clear The payment method must be consistent with the capitalization of the amount. The two parties can negotiate and agree on the payment method. The transferor can require payment when the contract takes effect or before the materials are delivered. The transferee can require payment after the materials are delivered or after the patent office announces it. Both parties can also agree. Payment in installments.
6. Treatment of patent rights being revoked and declared invalid
①According to the "Patent Law" Article 47 “The decision to declare the patent right invalid, the judgment and mediation letter on patent infringement made by the people’s court and executed before the declaration of the invalidity of the patent right, the settlement decision on patent infringement dispute that has been executed or enforced, and the executed decision The patent implementation license contract and patent rights transfer contract do not have retroactive effect. However, compensation shall be provided for losses caused to others due to the bad faith of the patentee. Patent infringement compensation, patent royalties, and patent rights shall not be returned in accordance with the provisions of the preceding paragraph. If the transfer fee clearly violates the principle of fairness, it shall be refunded in whole or in part." Therefore, attention should be paid to examining whether the patent has the possibility of being declared invalid.
② Regarding the liability when the patent right is revoked, it should be clear whether the transfer fee, patented materials and compensation for losses need to be returned.
③Request for revocation of patent rights against others, the Patent Reexamination Board declares the patent rights invalid, and the decision of the Reexamination Board (When a person is dissatisfied with an invention patent) and files a lawsuit in the People's Court, who is responsible for the defense and expenses?
7. The transition period clause should stipulate who will maintain the validity of the patent and bear the costs from the date of signing the contract to the date of transfer of the patent
① It should be agreed that from the signing of this contract to the date of registration and announcement by the Patent Office, the transferor should maintain the validity of the patent, but the annual fees and renewal fees to be paid during this period Who will pay the fee should be clearly stated in the agreement.
②After this contract is registered and announced in the Patent Office, who will be responsible for maintaining the validity of the patent, such as annual fees, renewal fees, administrative revocation and invalidation of the patent? Matters such as defense of requests and responses to invalid proceedings. (It can also be agreed that after this contract is signed and becomes effective, all costs for maintaining the validity of the patent right will be paid by the transferee.)
③During the transition period, due to If force majeure causes the transferor or transferee to be unable to perform the contract, this contract will be terminated.
8. Taxes, please agree on who will be responsible for paying the taxes involved in the transfer fees involved in this contract
9. Liability for breach of contract
①The transferor should pay attention to the liability for breach of contract when it exceeds the deadline or refuses to deliver patent materials and transfer procedures. .
②The transferee should pay attention to the liability for breach of contract when it exceeds the due date or refuses to pay the transfer fee.
10. To resolve the dispute, if the negotiation fails, you can choose the patent management agency, court, or arbitration institution that is beneficial to you to handle it
11. For other terms and conditions not agreed upon in the first ten articles, such as consultation, guidance, training, etc. involving patents, a separate agreement can also be made in accordance with the "Patent Law" Article 10 “The transfer of patent rights takes effect from the date of registration”
(3) Review of legal risks when signing a patent transfer contract
The transfer of patent rights means that the subject of the patent rights has changed. When signing a patent transfer contract, you should pay attention to the following issues:
1. Ownership issues: You should first search through the legal status to confirm that it is a valid patent, and The transferor holds patent rightsLegality and legality of transfer;
2. Patent history issues: You should first understand whether the patent has previously signed a license implementation contract with others, and the patentee Have you implemented it yourself, and clarify the legal responsibilities and solutions to these problems;
3. Check the necessary legal documents: Both parties to the patent transfer must provide Legal documents confirming their identity, and approval documents from the national patent management agency must be submitted for transfer abroad;
4. The contract text supervised by the national patent management agency must be used or other contract texts that comply with the provisions of the Patent Law and relevant laws and can regulate the transfer of patent rights;
5. The patent transfer contract must be registered and announced by the national patent management agency can take effect;
6. In view of the fact that the patent transfer contract is different from the general economic contract and technology contract, it also involves the transfer of technical documents, the payment of transfer fees, the patent For changes in ownership, etc., it is recommended that you consult a professional intellectual property service agency or entrust a service agency to help sign the agreement.
In summary, when signing a patent transfer contract, both parties must have a full understanding of the patent being transferred, and should strictly follow the legal regulations to handle relevant procedures. Thus, legal risks can be avoided to the maximum extent possible.
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