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 to 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.
Via Paulo Tomás Neves