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Battakhov Petr Petrovich
Candidate of Law Sciences, Senior research associate of the sector of enterprise and corporate law of Institute of the state and right of the Russian Academy of Sciences (IGP RAS)
DOI: 10.24411/2520-6990-2020-11683 AGREEMENT ON THE ALIENATION OF EXCLUSIVE RIGHTS TO OBJECTS
Abstract
The article analyses one of the contractual forms of disposal of the exclusive right to intellectual property objects - the contract on alienation of exclusive rights to the corresponding objects, as well as identifies the specifics of alienation of rights to industrial property objects.
Keywords: contract on alienation of exclusive right, industrial property, disposal of right.
It can be argued that the contract is one of the leading grounds for the disposal of an exclusive right, which is a very convenient tool for the rapid involvement of industrial property in economic turnover. At the same time, most authors prefer to ignore in the legal literature those civil-law designs that mediate the disposal of the exclusive right to intellectual property objects, mentioning in general the possibility of concluding such civil-law contracts[1].
At the same time, with the adoption of Part Four of the Civil Code of the Russian Federation, special civil law designs aimed at the disposal of the exclusive right - the contract on the alienation of the exclusive right and the licensing contract - were established at the legislative level. It is through these contracts, first of all, that objects of industrial property are involved in economic turnover.
Under the exclusion agreement, one party (right holder) transfers or undertakes to transfer its exclusive right to intellectual property in full to the other party (buyer). On the basis of such a definition of a treaty, it can be concluded that it can be concluded both on the model of a real contract and on the model of a consensual contract. Accordingly, if the treaty is built on a real model, it is unilateral and otherwise bilateral.
The Act does not explicitly indicate the retaliation of the treaty in question, and we can draw the following conclusion. On the basis of the general provisions on the priority of civil liability, the contract, unless expressly stated otherwise, is compensable. At the same time, it should be borne in mind that the provisions of article 434, paragraph 3, of the Civil Code of the Russian Federation on the payment of the price compared with the price of the same goods cannot apply to this contract in connection with the identity of the objects of the type of property under consideration. That is why the price of the contract or the direct indication of its grant should be explicitly indicated in the text of the contract under the fear of its invalidity.
In accordance with paragraph 2 of Article 1234 of the Civil Code of the Russian Federation, the model of the contract in question must be concluded in writing. Failure to comply with this rule results in the invalidity of the contract. It should be noted that the rule does not contain any exceptions with regard to the form of the contract on the alienation of the exclusive right to be concluded. Moreover, the norm itself is located in chapter 69, "General provisions." All this shows that the legislative requirement to comply with the written form of
this treaty should be uniformly applied to all objects that receive legal protection in accordance with Part Four of the Civil Code of the Russian Federation, even if the special rules do not say so.
However, the legislator, in determining the form of the contract on the alienation of the exclusive right, did not limit himself to the requirement of its written form. In accordance with paragraphs 1, 2 and 3 of Article 1232 of the Civil Code of the Russian Federation, if an object of intellectual property is subject to state registration, the contract on alienation of the exclusive right to such object must be registered with the relevant body (Rospatent). In this regard, it should be borne in mind that if by law the contract is subject to State registration, Then its traditional classification as real or consensual loses every meaning, Since the occurrence of rights and obligations of the parties in such a case is solely related to the fact that the mind of the transaction has been registered, Rather than the actual transfer of its object or from the moment agreement is reached on all the essential terms of the treaty.
The general provisions applicable to the results of intellectual activity and equated means of individuali-zation contain a norm aimed at strengthening the traditional protection of the alienator under the contract. According to Clause 5 of Article 1234 of the Civil Code of the Russian Federation, in case of non-fulfillment by the buyer of the right in the reimbursable contract of the obligation to pay the alienator the right (Right holder) contract-based remuneration, the latter has the right to claim in court transfer of this right (If it has already passed to the buyer) and compensation for the losses caused or may refuse to perform the contract unilaterally, as well as claim compensation for the losses caused to it by the termination of the contract.
Special rules contain clarification provisions regarding the alienation of exclusive rights to certain objects of industrial property. In particular, in the case of the alienation of exclusive rights under the patent, only the exclusive right to the relevant objects of industrial property, which does not include the right of priority, the right of copyright, as well as the rights to products and products that have been produced and put into circulation before the alienation of the exclusive right, is transferred to the buyer. In accordance with paragraph 7 of Article 1235 of the Civil Code of the Russian Federation, the transfer of an exclusive right to an object of intellectual property upon its disposal is not a basis for amendment or termination of the license agreement
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concluded by the previous right holder. At the same time, paragraph 13.8 of the joint Resolution of the Plenum of the Armed Forces of the Russian Federation and the Plenum of the EAC of the Russian Federation of 2009[2] provides for the independence of the rights of the patent holder from their licensees, which is expressed in the absence of the need to obtain the consent of the licensees under the relevant previously concluded license agreements for alienation by the patent holder of the exclusive right.
In this study, we consider it necessary to draw attention to the discussion in the legal literature about the partial alienation of a patent on a group of inventions. In one of the previously issued Notes to Part Four of the Civil Code of the Russian Federation, the authors point out that it is impossible to transfer to the buyer in any part of the formula or list of essential characteristics on the basis of the rule on indivisibility of the scope of rights certified by the patent. Therefore, the acquirer becomes the owner of the whole set of property rights, which was previously held by the owner[3]. A similar conclusion is drawn by a number of authors when considering various contractual models of the disposal of the exclusive right to invention, utility model and industrial design. In support of this conclusion, reference is made to the rule established in the law that the exclusive right to the relevant result of intellectual activity is transferred in its entirety, that is, in its entirety. That is why it has been concluded that it is not permissible to transfer, for example, one of the claims or any part of the list of essential features of the industrial design, while retaining the remaining paragraphs or parts of the patent holder - the transmitting party to the contract[4].
We tend to agree with the second view[5], which is as follows. In accordance with article 168 of the Civil Code of the Russian Federation, the contract on alienation of the right to use the result of intellectual activity or the means of individualization only by certain methods named in the contract is null and void. It should be borne in mind that it is not possible to replace the invalid selection of separate methods of using result elements (a particular intellectual property right object) with the possibility of dividing several combined into one result, which can separately act as a separate result.
In this regard, it is necessary to analyze the norm of paragraph 1 of Article 1225 of the Civil Code of the Russian Federation, which contains a list of the results of intellectual activity and equated means of individu-alization. As used in the plural, the listed objects of industrial property allow us to conclude that if the results are, for example, inventions, one invention is one result, in turn two inventions should be regarded as two results, etc.
Turning to Paragraph 1 of Article 1234 of the Civil Code of the Russian Federation, it is not difficult to note that the legislator has established the transition of the exclusive right in full to one result, which implies a single whole, in case of division of which into hotel components it ceases to be such. It is in this understanding of the outcome and the transition of exclusive rights to it that those authors who defend the first view on the discussion issue under consideration will be right.
In turn, if one as a certain result consists of two or more independent results, each of them is burdened with its own scope of rights, independent of the scope of rights to other results. Accordingly, the right holder of such a set of results has the right to transfer rights to all results in full to only one buyer and to transfer them to different subjects of law.
It should be noted that the isolation of separate results in their complex is possible, including in the case of granting to the right holder one patent for the whole complex, but only when an application has been submitted and a patent has been obtained for a group of inventions (useful models) in one patent formula. The same possibility is provided for applications and patents for industrial designs.
It should be noted that similar conclusions on the possibility of partial alienation of the right to a trademark or service mark can be drawn from the analysis of the relevant norms of the Civil Code of the Russian Federation. On the basis of article 1488, paragraph 1, of the Civil Code of the Russian Federation, under the contract on the alienation of the exclusive right to a trademark, one party (right holder) transfers or undertakes to transfer in full the exclusive right to the corresponding trademark belonging to it in respect of all goods or in respect of part of the goods for which it is registered, to the other party - the buyer of the exclusive right. In other words, the legislator accounts for the permissible alienation of the exclusive right to the trademark or service mark in full or in a certain part thereof. However, the "part of the full volume" should not apply to the very scope of the powers constituting the content of the exclusive right, but to all or part of the goods for which a trademark or service mark has been registered.
Paragraph 2 of Article 1488 of the Civil Code of the Russian Federation contains a fundamentally important rule, according to which the alienation of the exclusive right to the trademark is not allowed if it may cause the consumer to be misled about the manufacturer of the goods. This rule is particularly relevant for a partial assignment of an exclusive right to a trademark or service mark. This rule is set in mandatory form. As such, it meets the obligations arising from the membership of States in the Paris Convention for the Protection of Industrial Property. According to article 10-bis (Unfair competition) of the Convention, "all actions which may in any way cause mixing in relation to the enterprise, products or industrial or commercial activities of the competitor" are prohibited.
As G. Bodenhausen notes, it is possible to mislead the consumer when simultaneously using a trademark only with regard to the origin of the product sold with the same sign, or if the quality of the products produced by the co-owners of the trademark is different[6].
Domestic practice in this matter was formed during the period of validity of the Trademark Law in its original version in 1992. The Supreme Arbitration Court of the Russian Federation explained the following: "The manufacture of products of improper quality by the new owner of the trademark cannot serve as a basis for declaring the transaction on assignment of the trademark invalid, as the condition on the quality of the
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goods is not the content of such transaction, unlike the license agreement[7]."
In accordance with paragraph 3 of article 1488 of the Civil Code of the Russian Federation, which is an innovation of the current legislation on trademarks, the alienation of the exclusive right to a trademark, which includes as an unprotected element the name of the place of origin of the goods to which legal protection has been granted in the territory of the Russian Federation, is permitted only if the buyer has an exclusive right to such a name. In other words, if the trademark includes as an unprotected element the names of origin of goods registered in the territory of the Russian Federation, only persons who also have the exclusive right to the specified names of origin of goods may be included. Such a novella is also aimed at avoiding misleading the consumer about the special properties of the goods and their manufacturers. Therefore, failure to comply with this rule is misleading to consumers.
With regard to the disposal of objects of industrial property, the legislator established the possibility of a public offer to conclude an agreement on the alienation of a patent for invention (art. 1366 of the Civil Code of the Russian Federation) and for selection achievement (art. 1427 of the Civil Code of the Russian Federation). The essence of such a proposal is as follows. The legislator has granted the right of the author of the invention or selection achievement (this is a mandatory requirement of the law - public offer of this contract is entitled only to the author, if he is also the patent holder) Has the right to publicly propose to conclude an agreement on the alienation of the patent on terms consistent with established practice with any citizen of the Russian Federation or Russian legal entity who first expressed such desire and notified the patent holder and the federal executive body on intellectual property (Rospatent). However, it should be borne in mind that such a public offering can be made by the author only when applying for a patent for the invention by attaching a corresponding application to the application documents.
The contractual relationship to alienate the exclusive right to the secrets of production by virtue of their specificity also has a number of characteristics. In particular, in the case of alienation of the exclusive right to the secrets of production in order to maintain the legal regime of trade secrets, the duty of confidentiality of this secret is established for the assignor. This obligation is maintained until the termination of the exclusive right to it (art. 1468, para. 2, of the Civil Code of the Russian Federation).
The right to use confidential information devoted to the buyer can be used directly by the right holder only in the absence of a direct prohibition on such use by the buyer. Moreover, it should be borne in mind that the transfer of the exclusive right to the secret of production does not deprive the former right holder of the secret of production itself, although he transfers this secret. In this situation, the laws of animation work, accompanying the transition of the information product, which is the secret of production, from one subject to another.
The list of the used literature:
1. Braginsky M.I., Vitryansky V.V. Contract law: In 5 kN. Prince. 1: General provisions. M, 2009; Prince. 2: Transfer contracts. M, 2008; Prince. 3: Work and Service Contracts. M, 2002; Prince. 4: Contracts on transport, towing, transport expedition and other services in the field of transport. M, 2007; Prince. 5. Vol. 1 : Loan, bank credit and factoring agreements. Agreements aimed at the establishment of collective entities. M, 2006; Prince. 5. Vol. 2: Bank deposit, bank account agreements; bank calculations. Competition, game contracts and betting. M, 2006.
2. Resolution of the Plenum of the Supreme Court of the Russian Federation and the Plenum of the Supreme Arbitration Court of the Russian Federation No. 5/29 of 26 March 2009 "On Certain Issues Arising from the Introduction of Part Four of the Civil Code of the Russian Federation"//Russian Gazette, No. 70, 22.04.2009.
3. Gavrilov E.P., Cities O.A., Grishayev S.P. et al. Commentary to the Civil Code of the Russian Federation, part four (article-by-article). M.: Avenue,
2007. Page 369.
4. Erenko V.I., Evdokimov V.N. The main contractual forms of disposal of the exclusive right to invention, utility model or industrial design in Part Four of the Civil Code of the Russian Federation//Invention.
2008. № 3.
5. Jermakyan V. Yu. Comment to Chapter 72 "Patent Law" of the Civil Code of the Russian Federation (Article-by-Article). 2nd Ed., Use and Add.//ATP "Consultant Plus. 2010».
6. Bodenhausen G. Paris Convention for the Protection of Industrial Property. Comment. M. : Progress, 1997. Page 95.
7. Information Letter dated 29 July 1997 from the Presidium of the Supreme Arbitration Court of the Russian Federation No. 19 "Review of the settlement of disputes related to the protection of trademark rights"//IAC Gazette of the Russian Federation. 1997. № 10.
