Article 1234. The Contract of Alienation of an Exclusive Right

1. Under a contract of alienation of an exclusive right one party (right holder) assigns or undertakes to assign its exclusive right to the result of an intellectual activity or means of individualisation to another party (acquirer) in full.

2. The contract of alienation of the exclusive right shall be made in writing and it shall be subject to state registration in the cases envisaged by Item 2 of Article 1232 of the present Code. The non-observance of the written form or of the provision requiring state registration shall cause the invalidity of the contract.

3. Under the contract of alienation of the exclusive right the acquirer undertakes to pay the fee envisaged by the contract to the right holder, except as otherwise envisaged by the contract.
If a contract of alienation of an exclusive right concluded on a compensation basis does not comprise a clause concerning the amount of fee or procedure for determining it, the contract shall be deemed unconcluded. In this case, the rules envisaged by Item 3 of Article 424 of the present Code for price-setting shall not be applicable.

4. The exclusive right to the result of an intellectual activity or means of individualisation is transferred from the right holder to the acquirer of the right as of the time of conclusion of a contract of alienation of the exclusive right, except as otherwise established by agreement of the parties. If the contract of alienation of the exclusive right is subject to state registration (Item 2 of Article 1232), the exclusive right to the result or means is transferred from the right holder to the acquirer of the right as of the time of state registration of the contract.

5. If the acquirer has significantly failed to observe his duty to pay the right holder within the term established by the contract of alienation of the exclusive right a fee for the acquisition of the exclusive right to the result of the intellectual activity or means of individualisation (Subitem 1 of Item 2 of Article 450) the previous right holder shall be entitled to claim in court that the rights of the acquirer of the exclusive right be assigned to the previous right holder and also a payment of damages, if the exclusive right has been transferred to the acquirer thereof.
If the exclusive right has not been transferred to the acquirer then, if he has failed to execute his duty to pay within the term set by the contract a fee for the acquisition of the exclusive right the right holder may waive the contract unilaterally and claim a payment of damages due to the rescission of the contract.

Article 1235. The Licence Contract

1. Under the licence contract one party being the holder of the exclusive right to the result of an intellectual activity or means of individualisation (licensor) undertakes to grant to the other party (licensee) the right of using the result or means within the limits set out in the contract.
The licensee may use the result of the intellectual activity or means of individualisation only within the limits of the rights and in the manner set out in the licence contract. The right of using the result of intellectual activity or means of individualisation not expressly mentioned in the licence contract shall not be deemed granted to the licensee.

2. Except as otherwise envisaged by the present Code, the licence contract shall be concluded in writing.
The licence contract shall be subject to state registration in the cases envisaged by Item 2 of Article 1232 of the present Code.
The non-observance of written form or of the provision requiring state registration shall cause the invalidity of the licence contract.

3. The licence contract shall make reference to the territory on which the use of the result of the intellectual activity or means of individualisation is permitted. If the contract does not comprise reference to the territory on which the use of the result of the intellectual activity or means of individualisation is permitted, the licensee is entitled to use them throughout the territory of the Russian Federation.

4. The term for which the licence contract is concluded shall not exceed the effective term of the right to the result of the intellectual activity or means of individualisation.
If the licence contract does not define its effective term, the contract shall be deemed concluded for a five-year term, except as otherwise envisaged by the present Code.
If the exclusive right is terminated the licence contract shall be terminated.

5. Under the licence contract the licensor undertakes to pay to the licensee the fee specified in the contract, except as otherwise envisaged by the contract.
If an onerous licence contract does not comprise a clause on the amount of fee or on the procedure for setting it, the contract shall be deemed unconcluded. In this case the pricing rules set out in Item 3 of Article 424 of the present Code are not applicable.

6. The licence contract shall set out the following:
1) the subject matter of the contract, by referring to the result of the intellectual activity or means of individualisation which may be used under the contract, and in relevant cases to the number and date of issue of a document certifying the exclusive right to the result or means (a patent or certificate);
2) the manner in which the result of the intellectual activity or means of individualisation is going to be used.

7. The transfer of the exclusive right to the result of an intellectual activity or means of individualisation to the new right holder shall not be deemed a ground for modifying or rescinding the licence contract concluded by the previous right holder.

Article 1236. The Types of Licence Contracts

1. A licence contract may serve to:
1) grant to a licensee the right of using the result of an intellectual activity or means of individualisation, with the licensor's retaining his right of issuing licences to other persons (a simple (non-exclusive) licence);
2) grant to the licensee the right of using the result of an intellectual activity or means of individualisation, with the licensor's not retaining the right of issuing licences to other persons (an exclusive licence).

2. Except as otherwise established by the licence contract, the licence is deemed simple (non-exclusive).

3. In respect of various types of using the result of an intellectual activity or means of individualisation one licence contract may comprise the terms set out in Item 1 of the present article for licence contracts of various types.

Article 1237. Performing the Licence Contract

1. The licensee shall provide reports to the licensor on the use of the result of the intellectual activity or means of individualisation, except as otherwise established by the licence contract. If a licence contract requiring the making of reports on the result of an intellectual activity or means of individualisation lacks a clause concerning the term and procedure for the provision of reports, the licensee shall present such reports to the licensor if requested by him.

2. During the effective term of the licence contract the licensor shall abstain from committing actions capable of impeding the licensee's exercising his right of using the result of the intellectual activity or means of individualisation within the limits set by the contract.

3. Using the result of the intellectual activity or means of individualisation in a manner not envisaged by the licence contract or upon the termination of such contract or otherwise beyond the limits of the rights granted to the licensee under the contract shall cause the accountability for a breach of the exclusive right to the result of the intellectual activity or means of individualisation established by the present Code, other laws or the contract.

4. If the licensee fails to execute his duty to pay to the licensor within the term set by the licence contract a fee for the granting of the right of using scientific, literary or artistic works (Chapter 70) or objects of allied rights (Chapter 71) the licensor may unilaterally waive the licence contract and claim a payment of the damages caused by the rescission of the contract.

Article 1238. The Sub-licence Contract

1. Given the licensor's consent in writing, the licensee may grant under a contract the right of using the result of the intellectual activity or means of individualisation to another person (a sub-licence contract).

2. Under the sub-licence contract a sub-licensee may obtain the rights of using the result of the intellectual activity or means of individualisation only within the limits of the rights and the manners of use set out in the licence contract for the licensee.

3. A sub-licence contract concluded for a term exceeding the effective term of the licence contract shall be deemed conclude for the effective term of the licence contract.

4. The licensee shall be liable before the licensor for the actions of a sub-licensee, except as otherwise established by the licence contract.

5. A sub-licence contract shall be subject to the rules of the present Code governing the licence contract.

Article 1239. The Enforced Licence

In the cases envisaged by the present Code a court may take a decision on the claim of a person concerned to grant to the person on the terms specified in the court's decision the right of using the result of intellectual activity in which the exclusive right is held by another person (enforced licence).

Article 1240. Using the Result of Intellectual Activity as Part of a Complex Object

1. The person that has organised the creation of a complex object incorporating several protected results of intellectual activities (a film, another audiovisual work, theatre performance show, multimedia product, comprehensive technology) acquires the right of using these results under contracts of exclusive right alienation or licence contracts concluded by the person with the holders of the exclusive rights in the relevant results of the intellectual activities.
If the person that has organised the creation of a complex object acquires the right of using the result of intellectual activity that has been specifically created or is being specifically created for being included in the complex object the relevant contract shall be deemed a contract exclusive right alienation, except as otherwise envisaged by agreement of the parties.
A licence contract having a provision for using the result of intellectual activity within a complex object shall be concluded for the whole term and in respect of the whole territory of effect of the relevant exclusive right, except as otherwise envisaged by the contract.

2. The terms of a licence contract that impose limitations on the use of the result of intellectual activity within a complex object shall be deemed invalid.

3. If the result of intellectual activity is used within a complex object, the author of the result shall retain the right of attribution and other personal non-property rights to the result.

4. While using the result of intellectual activity within a complex object the person that has organised the creation of the object shall be entitled to indicate his/its name or claim that such indication be made.

5. The rules of the present article shall be applicable to the right of using the results of intellectual activity within a comprehensive technology created entirely or partially with federal budget funds, except as otherwise established by the rules of Chapter 77 of the present Code.

 

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