International report - Intellectual property goes to market 22 Jan 14
Gorodissky & Partners - Russia
Russian law provides various ways of commercialising intellectual property. The owner of a patent or trademark may assign it or grant a licence, and franchising is also becoming more popular. The law has provided for these options for a long time and they are widely used by rights holders. Every year the Patent Office registers between 15,000 and 20,000 IP transactions. Rights holders know how to dispose of their IP rights, and registration procedures have been made less cumbersome in recent years, with further changes still to come. Now the parties must simply notify the Patent Office of the conclusion of the contract, rather than the Patent Office examining the contract provisions carefully. This simplifies the registration procedure but can make it more difficult to deal with any controversy that arises. Until now, the Patent Office has called parties' attention to contradictory provisions, allowing them to correct them as necessary. In future, in the absence of such safeguard, the parties will have to resolve any misunderstandings in court. This may be difficult as in some cases the parties fail to indicate accurately what is being licensed or other important conditions of their cooperation. Resolving these issues in court may cost much more than the process to register the licence with the Patent Office. Only time will tell whether these concerns are valid. In any case, a patent attorney can help the parties to ensure that the wording of a licence contract is coherent.
Security contracts are also becoming more popular among rights holders. Although these are far less common than licences and assignments, they are already a notable phenomenon on the IP horizon.
In order to give more opportunities to rights holders and potential IP rights buyers, the Russian Auction House of Intellectual Property (RUSINPRO) organises IP auctions. The Civil Code provides for the organisation of sales by means of an auction or tender. RUSINPRO organised the second IP auction in December 2013. The first IP auction was held in 2012: it elicited much interest among the patent owners and several lots were sold. As a result, even more lots were proposed for sale at the 2013 auction, with participants from both Russia and around the world.. Several lots were sold out of several dozen and the cost of the deals surpassed Rb60 million. This is a promising beginning, and RUSINPRO plans to expand its activities and make its auctions available online. In future, trademarks may also be included in the sales. This type of commercialisation has major potential.
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