The disposal of intellectual property rights by a rightsholder is typically executed through formal agreements that establish the specific terms and conditions for the transfer or use of such assets.

It is critical to note that when an intellectual property (IP) asset or a means of individualization is subject to state registration, the assignment of exclusive rights must also be registered in accordance with statutory requirements. This applies to several categories, including:

1. Inventions, utility models, and industrial designs;
2. Plant variety selections;
3. Trademarks and service marks;
4. Topologies of integrated circuits;
5. Computer programs and databases.

A rightsholder may dispose of their exclusive rights to an IP asset or means of individualization in any manner that does not conflict with the law or the nature of the exclusive right itself.

The primary mechanisms for the transfer or disposal of exclusive rights include:

1. Intellectual property assignment agreements (full transfer of rights);
2. Licensing agreements.

Legal Support for Intellectual Property Transactions

In accordance with Article 1235 of the Civil Code of the Russian Federation, under a licensing agreement, one party—the holder of the exclusive right to an IP asset or means of individualization (the licensor)—grants or undertakes to grant the other party (the licensee) the right to use such an asset within the limits stipulated by the contract.

The licensee is authorized to use the IP asset or means of individualization only within the scope of rights and by the methods expressly provided for in the licensing agreement. Any right of use not explicitly granted is deemed withheld from the licensee. Licensing agreements must be executed in writing unless otherwise provided by law; failure to comply with the written form renders the agreement void.

Licensing agreements may be structured as follows:

1. Simple (Non-Exclusive) License: Granting the licensee the right to use the asset while the licensor retains the right to issue licenses to third parties.
2. Exclusive License: Granting the licensee the right to use the asset without the licensor retaining the right to issue licenses to other parties.

Furthermore, subject to the licensor’s written consent, a licensee may grant the right to use the IP asset to a third party through a sublicensing agreement.

Licensing agreements must also specify the territory in which the use of the IP asset is permitted. If the territory is not defined in the contract, the licensee is entitled to use the asset throughout the entire territory of the Russian Federation.

Legal Audits and Drafting of IP Agreements

Under an assignment agreement (transfer of exclusive rights), the rightsholder transfers or undertakes to transfer the exclusive right to an IP asset or means of individualization in its entirety to the assignee. Such agreements must be executed in writing; otherwise, the transaction is considered invalid.

The assignee is obligated to pay the rightsholder the remuneration specified in the agreement. In the case of a commercial assignment agreement, if the amount of remuneration or the method for its determination is not specified, the contract is deemed not to have been concluded (void for lack of essential terms).

Comprehensive Legal Counsel for Intellectual Property Assets

To facilitate the effective disposal of IP assets, our legal practitioners and intellectual property specialists conduct a thorough analysis of all title-establishing documents. We verify registrations, perform comprehensive due diligence on existing IP-related contracts, and manage all necessary procedures to ensure the valid execution of disposal agreements.

Our strategic approach to legal support accounts for the unique nuances of each case. We ensure that all critical conditions—often overlooked in standard templates—are tailored and reflected in the final contract. This bespoke methodology mitigates the risks of unlawful transfers, unauthorized disposal of IP assets, and potential revenue loss for rightsholders.

Conducting a professional legal audit of an intellectual property agreement allows for the identification of structural deficiencies, potential liabilities, and other adverse consequences that may arise if significant terms are not adequately addressed.

Engaging qualified and experienced IP specialists ensures that the disposal of intellectual property assets complies with current legislation, guarantees the timely preparation of protective documentation, and minimizes the risk of infringement or unauthorized disposal.

Legal Assistance in Intellectual Property Contracting

1. Advising on complex intellectual property matters;
2. Conducting comprehensive legal due diligence of IP-related agreements;
3. Providing strategic legal support during the negotiation of IP contracts;
4. Drafting tailored agreements concerning rights to intellectual property assets.