1. Legal risks of improper understanding of intellectual property rights
According to legal provisions, intellectual property rights in a broad range can be used as a form of investment. Therefore, copyright-related rights, trademarks, patents, non-proprietary technology, manufacturer name rights, integrated circuit layout designs, undisclosed information, etc. are all available investment methods.
However, even if there are many types of intellectual property rights that can be invested, we still face legal risks in choosing the specific investment form. Because different types of intellectual property rights may have different values ??and market application values, these need to be carefully considered. Investment must be made in relatively mature types of intellectual property rights with broad market prospects or commercial value.
Therefore, for high-tech enterprises, investment in intellectual property rights is the main focus in the early stages of establishment, but the scope of investment is relatively large. Non-proprietary technologies that have not obtained patent protection can also be invested. Should be limited to patents or trademarks only. Otherwise, the breadth and value of intellectual property rights will not be fully utilized and the chance of successful investment will be reduced.
2. Legal risks of defects in intellectual property rights
Whether the intellectual property rights used for investment have defects in rights, clarify the inherent risk cost of this part, so as to predict in advance in static identification expenditure.
The first is the legality of the intellectual property used for investment. The question focuses on: What kind of rights certificates must be produced by the investor of the trademark or patent in order to determine the publicity and credibility of the relevant intellectual property rights and thereby confirm the legality of the investment object.
The second issue is the stability of the intellectual property used for investment. The so-called stability of intellectual property refers to the extent to which the intellectual property is controlled by the right holder and protected by law within the statutory protection period. On the one hand, the Trademark Law sets up a "cancellation" procedure for registered trademarks. The Patent Law sets up an "invalidation" procedure for patent rights that have been obtained. This means that trademarks and patents used for investment may be "revoked" due to other people's applications, resulting in the invalidation of the intellectual property investment. On the other hand, the intellectual property rights used for investment may be invalidated due to the establishment of a claim by a third party.
The third is the timing issue of intellectual property used for investment. This issue may have some degree of intersection with legitimacy and stability. In particular, it is proposed to examine the timing of the invested intellectual property rights, because trademark rights, patent rights and copyrights all have statutory validity periods. In practice, there are many investment disputes caused by expired intellectual property rights losing investment value.
3. Legal risks for intellectual property investors
First of all, if an individual citizen makes an investment using intellectual property rights such as patents, proprietary technologies, computer software, etc., he or she should examine whether the results are job results or not. Non-job achievements. The "Patent Law" stipulates that inventions and creations completed in the process of performing the tasks of the unit or mainly using the material and technical conditions of the unit are service inventions and creations; the right to dispose of investment in service inventions and creations generally belongs to the unit, the inventor or the designer The capital contribution cannot be made in the name of an individual, unless of course the inventor or designer agrees otherwise. The "Regulations on the Protection of Computer Software" stipulates that software developed by natural persons for clearly designated development goals in their own work, the software developed is the foreseeable or natural result of engaging in their own work activities, and the material and technical conditions of legal persons or other organizations are mainly utilized. The copyright of software developed and borne by a legal person or other organization shall be enjoyed by the legal person or other organization. It can be seen that if a citizen uses his job results to make investment in his own name, his employer may raise objections, which will bring a lot of trouble to the company that accepts the investment.
Secondly, when a legal person or other organization uses intellectual property to invest, attention should be paid to examining the subject’s rights and capacity for conduct. According to the nature of the legal person's activities, my country's "General Principles of Civil Law" divides legal persons into enterprise legal persons, agency legal persons, public institution legal persons and social group legal persons. First, among institutional legal persons, institutions or departments authorized by the state to represent the state and invest with state-owned property can become investors in the company, so of course they can invest in the company with intellectual property rights. Under other circumstances, agency legal persons cannot become intellectual property investors.
Second, the company's "investors are legal persons, including corporate legal persons (including foreign companies, enterprises, etc.), institutional legal persons and social group legal persons." As long as it has the right to dispose of a certain intellectual property, it can contribute capital to the company.
Thirdly, when multiple entities invest in intellectual property rights that they all share the same rights to, attention should be paid to examining the legal relationships between the multiple entities. Taking the "identical invention and creation" in the Patent Law as an example, one situation is the technical achievements developed under entrustment. For the technical achievements produced under the entrustment relationship, the law stipulates that the entrusting parties must agree on the ownership of the rights to the results in the entrustment contract. ; If the agreement is unclear or has not been agreed upon, the technical results developed shall belong to the entrusted party. Another situation is the technological achievements of joint development, which are owned exclusively by all parties involved in the joint development. One party must obtain the consent of the other parties to dispose of the achievements, and the parties shall share the proceeds.
IV. Legal risks of intellectual property value evaluation
The evaluation value of intellectual property is related to its market application and profit value, as well as to the proportion of equity or the intensity of control rights, so based on Objective, true and comprehensive evaluation data, choosing scientific and reasonable evaluation methods and professional evaluation institutions are issues that high-tech enterprises must consider in the technology investment process.
In the evaluation process, ignoring the following factors often leads to incorrect evaluation results.
(1) The review of early development costs for high-tech technologies is untrue.
(2) The market risk prediction of similar products or technologies is inaccurate, and the market potential and value analysis is biased.
(3) Improper prediction of subsequent development expenses.
If the assessment is inaccurate or improper, technology investors will suffer significant disadvantages in protecting the value of intellectual property.
For more asset evaluation issues, please refer to: Lawyer Qin Dayi’s special research on "Asset Management"
5. Legal risks of intellectual property investment ratio
Intellectual Property Rights The proportion of investment refers to the proportion of intellectual property investment in the company's registered capital. The definition of the proportion of intellectual property investment involves two issues: first, the legislative limit on the upper limit of intellectual property investment; second, how shareholders determine the proportion of intellectual property in the company's registered capital in practice.
According to the law, the maximum proportion of intellectual property investment can reach 70%, which shows that the law encourages investment in intellectual property, but there are also legal risks in investment proportions that are too high or too low. Therefore, the appropriate capital contribution ratio must be selected based on the actual situation. The following three reference principles:
(1) Intellectual property rights are necessary for the company
When establishing a company, shareholders must agree on the business of the company, including business objects, operations Agree on the scope and record it as an absolutely necessary matter in the articles of association. When shareholders decide to invest in a certain intellectual property, they must ensure that the intellectual property is necessary for the company's business operations. The company's business objects and scope not only determine the size of the company's capital, but also determine the company's capital structure. For example, for a securities company that operates securities business, the capital it requires should mainly consist of monetary funds. For example, for a taxi company operating a taxi operation, the components that constitute its capital can be monetary funds, physical property and taxi franchise rights. Therefore, in order to ensure that intellectual property rights are necessary for the company, shareholders must determine the investment proportion of intellectual property rights based on the company's business objects and business scope. If the company operates a high-tech industry, the investment proportion of intellectual property rights can be increased, or even Contribute the maximum proportion permitted by law. If the company operates a non-high-tech industry but a general industry, especially the tertiary industry, the investment proportion of intellectual property rights should be reduced to increase the investment of other assets such as monetary funds that the company needs.
(2) Intellectual property rights are suitable for the company’s business scale
Generally speaking, the larger the company’s business scale, the capital invested will increase accordingly and its borrowing capital will also increase. . Intellectual property rights need to be combined with certain tangible assets in order to exert their capital function. The larger the company's operating scale, the more tangible assets are needed to play the role of intellectual property.
Intellectual property rights account for an excessively high proportion of a company’s registered capital, requiring more tangible assets such as currency and physical objects. And "in the early stages, companies generally rely on issuing shares and internal debt for financing." This will undoubtedly increase the company's financing pressure, affect the company's normal operation and development, and even cause the company's operating difficulties. Therefore, when deciding the investment proportion of intellectual property rights, shareholders should consider the size of the company's future business scale. If the business scale is large, the investment proportion of intellectual property rights should be appropriately reduced; if the business scale is small, the investment proportion of intellectual property rights can be appropriately increased.
(3) Eligibility of the intellectual property itself
The eligibility mentioned here refers to the nature, type, technological novelty, practicality and the degree of the intellectual property. The proportion of investment is appropriate. This determines the proportion of investment based on the intellectual property's own factors. When determining the investment ratio of intellectual property rights, shareholders must distinguish whether the intellectual property rights are patent rights, trademark rights, copyrights, technical secrets or other types of intellectual property rights. Regarding patent rights, it is also necessary to distinguish whether it is an invention patent, a utility model patent or a design patent. Because different properties and types of intellectual property have different requirements for tangible assets such as currency. If it is an invention patent right necessary to produce the company's products, the investment ratio can of course be appropriately increased. If it is a trademark right, since it is not directly integrated with the company's production, the investment ratio should be appropriately reduced to increase the investment ratio of other capital. The newness and practicality of technology mainly refer to the advanced nature of technology, whether there are new or alternative technologies, and whether the products produced using this technology are intermediate products or terminal products. This also has a significant impact on the determination of the investment ratio of intellectual property rights. The more advanced and new the technology, the investment ratio of its patent rights and technical secrets can be appropriately increased. The investment ratio for technology that produces terminal products can be higher than that for technology that produces intermediate products; conversely, for older technologies that still have value, patent rights, trademark rights, and copyrights with relatively short protection periods are not as practical as the production of intermediate products. For lower technologies, the investment proportion should be appropriately reduced.
6. Legal risks of intellectual property investment methods
There are two ways of intellectual property capitalization: intellectual property transfer and licensing, but intellectual property capitalization is not a simple intellectual property transfer and licensing. . If an investor invests in a transfer, it appears that the specific intellectual property rights are completely "sold" to the company in which it invests. However, there are two points that are different from ordinary intellectual property transfers: First, the investor has not obtained an intellectual property transfer for this purpose. The consideration is to obtain the equity of the invested enterprise; secondly, the investor may not completely lose the intellectual property rights. The investor can enjoy the remaining property distribution rights when the company terminates as a shareholder, and it can allocate the intellectual property rights according to the agreement. , bringing it back into the hands of investors. In view of this, intellectual property investors cannot simply analyze the pros and cons of these two investment methods from the perspective of intellectual property transfer and licensing. Capitalized intellectual property is dynamic capital and is quite unstable. This is not only a factor that enterprises receiving investment must consider, but also something that intellectual property investors must consider when choosing an investment method. Take the investment in trademark rights as an example. The trademark rights used for investment can still return to the hands of the investor when the invested company terminates. The value of the trademark during the capitalization period will fluctuate, especially if it is suppressed by the invested company. The decrease in its value will be related to the vital interests of the trademark investor. "In the joint venture, the method of investment can be the transfer of our trademark, or the license to use our trademark. In the latter method, we still retain the right to use it outside of the joint venture. By investing in this way, there is less chance that our well-known trademarks will be wiped out and put out of use.” In fact, this is also inspiring for using trademark rights to invest in domestic enterprises.
When investing through the transfer of intellectual property rights, all parties must comply with the legal provisions on the transfer of intellectual property rights.
First of all, companies that accept investment in intellectual property rights must meet legal conditions: companies that accept investment in trademark rights must have the qualifications of trademark registration applicants stipulated in the Trademark Law, and companies that accept investment in patented technology must meet the requirements of the Patent Law for patent rights subjects. Qualification requirements: To accept investment in registered trademarks of human medicines and tobacco products, enterprises must have business license certificates from the corresponding commodity production authorities; to accept investment in intellectual property, they must ensure the quality of the goods or services using the intellectual property. Secondly, intellectual property investors must fulfill legal obligations: if the investor invests by transferring trademark rights or patent rights, the investor should completely transfer the entire specific trademark or patent rights; [26] If the investor uses intellectual property rights that have been licensed to others, Capital contribution must obtain the consent of the licensee and shall not harm the interests of the licensee.
Investing through intellectual property licensing means that the intellectual property owner retains the final right to dispose of the intellectual property and only "transfers" the right to use the intellectual property for a certain period and scope to the company receiving investment. In the investment agreement, both parties specifically agree on the scope and content of the right to use the intellectual property. Intellectual property licensing rights have capital attributes and can be used to create new value, so they can be used for investment. "In technology trade, it is very rare for one party to actually transfer the ownership of its patented technology to another party (i.e., 'sell the patent'); people who hope to obtain advanced technology usually only want to obtain the right to use the relevant technology, and rarely Few people will 'buy' someone else's patent, because buying a patent is much more expensive than just obtaining the right to use it." [27] Investors who invest in intellectual property licensing should abide by the relevant provisions of intellectual property law and contract law. Regulation.
From the perspective of corporate law, there may be legal obstacles to intellectual property investment. Intellectual property rights are time-sensitive, and the validity period of the intellectual property rights used for investment may not be consistent with the operating period of the company receiving the investment. In this case, whether the investment is made to the company in the form of intellectual property transfer or intellectual property licensing, it will be inconsistent with the period of operation of the company. Conflict of capital maintenance principles in corporate law. One of the manifestations is that if the validity period of the intellectual property capital is shorter than the company's operating period, the company will be difficult to maintain its capital; the second manifestation is that the value of the intellectual property is unstable, such as the value of a trademark and the usage and usage of the trademark. The trademark's product quality is closely related, and the value of patented technology and computer software is closely related to the development and application of new technologies and market changes. Once the capital value of intellectual property fluctuates, causing it to be lower than the assessed value at the time of investment, the company will also have to take relevant capital maintenance measures.
7. Commercial Risks of Intellectual Property Investment
The degree of commercialization of the intellectual property used for investment directly determines whether the intellectual property can be applied in the dynamic process of company operations. The main factors that need to be considered are:
(1) Whether the intellectual property used for investment is technically practical
Taking patents as an example, my country’s patent law It is required that in addition to novelty and creativity, inventions and creations applying for patents should also be practical, and "practical" is defined as "being able to be manufactured or used and capable of producing positive effects." However, this practicality requirement only emphasizes that the invention and creation for which the patent is applied for is embodied in a specific solution, and does not require that it can be manufactured or used immediately. In addition to patents, the proprietary technology and computer software used for investment must also demonstrate the technical feasibility of the intellectual property rights.
(2) What is the market prospect of intellectual property used for investment?
The creative intellectual achievements that obtain intellectual property are generally advanced, but due to the competition of complex factors in the market, advanced Sex does not determine market prospects. According to the provisions of my country's current patent law, an invention patent may take up to three or four years or even longer from the date of application to the date of authorization. A certain invention has great potential when applying for a patent, but it is likely to fail when the patent right is obtained. Market potential has been greatly reduced or even non-existent. In addition, the advancement and market prospects of patented technology are only compared with those that have been disclosed. More advanced but not yet disclosed technologies are often the "strong rivals" of patented technologies.
In short, enterprises accept investment in creative intellectual achievements in order to obtain highly profitable technologies and form competitive advantages. Therefore, it is very necessary to examine and demonstrate the prospects of the intellectual property market used for investment.
(3) It is the length of the economic life of the intellectual property used for investment
The economic life of the intellectual property is not equivalent to its legal protection period. For creative intellectual achievements, the economic life of intellectual property rights that are about to expire will not be long, but the economic life of intellectual property rights with longer validity periods may not be long either. The patent system not only protects the interests of inventors and provides them with "exclusive" legal protection for a certain period of time for their patented inventions and creations, but the public nature of the patent system also gives the patentee's "exclusive rights" a certain degree of relativity. . This is because the disclosure of patent documents and the opening of the information highway have greatly shortened the time for people to develop more advanced technologies based on original patented technologies and eliminate existing patents. Based on this, when enterprises accept investment in creative intellectual achievements, they need to consider the economic life of the technology and the validity period of the intellectual property separately.
8. Legal Risks of Intellectual Property Transfer
Even if there is no dispute over the ownership of intellectual property rights, the parties to the investment still face the problem of restricting the transfer of intellectual property rights to the technology owner, because This is related to the risks and interests of capital contributors. Improper transfers or transactions may be detrimental to the maintenance and utilization of intellectual property value.
For the controlling party, holding a controlling stake in an enterprise not only has accounting significance in terms of consolidated accounting, but also has control significance in being able to take the initiative in operation and management. To truly hold a controlling stake in an enterprise, in addition to the controlling party having an absolute advantage in investment proportion, the controlling party must also serve as the chairman of the board, and also have the right to nominate a general manager and financial director. In this way, the resolutions and management concepts of the corporate board of directors can be implemented more effectively. For investment and holding of a high-tech enterprise, the deeper significance is that the controlling shareholder can truly grasp the high-tech investment, and prevent the high-tech from being copied and replaced, causing huge investment losses to the investors.
Therefore, in a cooperation agreement, if the parties ignore or underestimate the ownership of technological achievements, or the agreement is vague or unclear, it will easily lead to disputes, especially for technology developers, resulting in intellectual property protection issues. significant obstacles. This hidden danger may lead to improper use, leakage, or loss of integrity of components of technical achievements.
To prevent high and new technologies from being transferred without authorization, the following measures may be considered in investment cooperation agreements or company articles of association:
(1) Clearly stipulate that intellectual property rights belong to the company
In the agreement to establish a high-tech enterprise, the ownership of the high-tech before and after the investment is listed, and the guarantees and commitments of the investing parties regarding the invested high-tech are included, and the law is used to restrict the investment parties in handling the high-tech achievements. behavior, and only the intellectual property investment can truly be owned and controlled by the enterprise after the transfer procedures are completed.
Accordingly, the investment "declaration clauses of all parties" can be included in the company's articles of association. The proprietary technology related to the high-tech (including but not limited to specific production processes, techniques and other laws and practices) The ownership of technical secrets (which should be reasonably regarded as proprietary technology) shall be owned exclusively by the formed company, and all parties promise not to raise contrary opinions at any time or on any occasion" and shall not be transferred in the name of an individual.
(2) It is clearly agreed that all parties have intellectual property confidentiality obligations
Restrict the use and confidentiality of relevant intellectual property materials and technical secrets by each party. If the confidentiality obligations are not limited, corresponding confidentiality measures will not be taken. Measures will lead to the risk of arbitrary use, transfer or leakage by all parties.
If the high-tech is illegally leaked, it will seriously affect the commercial value of the enterprise and the risk of venture investors. Therefore, we can consider including high-tech confidentiality obligations and leakage penalty clauses in the contracts and articles of association of high-tech enterprises, and prevent the leakage of trade secrets by formulating a complete corporate trade secret system.
(3) Protecting intellectual property rights through equity incentives for technical employees
Driven by the interests of shareholders, scientific and technological personnel bringing technology into shares is not only conducive to the application of high and new technologies, but also beneficial to The protection of high-tech patent rights also guarantees the subsequent development of high-tech. For example, Yili Group has given a large number of stock options to core technical backbones, which has stabilized the core competitiveness of the technical team and the entire enterprise.