So what details should be paid attention to when executing the patent licensing contract?
Precautions for Licensor and Licensee
1. Subject qualification examination: both parties to the contract shall investigate the asset status, credit status and legal subject qualification of the other party.
2. Both parties shall clarify the nature of the contract and reasonably define the rights and obligations of both parties.
3. The parties shall clearly agree on the way to accept the patented technology. It may be agreed to adopt the methods of appraisal meeting and expert review, or it may be agreed that the acceptance shall be deemed as passed by the licensee.
4. Patents are highly technical and professional. Therefore, when signing a contract, the terms of the contract must be accurate and clear, and some key terms should be defined or explained to avoid ambiguity. The expression of contract terms must be complete and standardized.
5. The parties concerned shall expressly stipulate that all technical contents involved in the patent specification and the scope of rights protection shall be submitted when applying for patent exploitation license, including process design, technical report, process formula, documents and drawings, etc.
6. As long as there is a breach of contract or compensation for losses, the specific amount or calculation method must be agreed. In case of breach of contract, the agreed amount cannot be too high or too low. If the agreed amount is too low, the loss will not be compensated. If the agreed amount is too high, it will not be realized because there is no legal support for it. Generally speaking, the agreed amount of breach of contract cannot exceed the amount of the subject matter of the contract. If one party's loss really exceeds the subject matter of the contract, it can directly agree to compensate for the loss.
7. Both parties shall stipulate in the contract that matters not covered in the contract shall be implemented in accordance with relevant laws and regulations. Where there are no provisions in laws and regulations, both parties may sign a written supplementary agreement as an annex to this contract through consultation, and the supplementary agreement has the same legal effect as this contract.
8. Both parties shall specify the material carriers (such as drawings, documents, disks, etc.). ) used for the subject matter of the contract.
9. Both parties to the contract should investigate the latest laws and regulations of the industry and the latest policies recently promulgated by the state, and give guidance on signing the contract.
10. The parties agree that if one or both parties violate the terms of the contract within the validity period of the contract, it is agreed that the breaching party shall bear the liability for breach of contract and pay a certain amount of liquidated damages to the other party according to the seriousness of the breach of contract.
1 1. Both parties shall clearly agree on the time when the transferor submits the patented technology.
12. The limitation of action for patent licensing contract disputes is two years, which is related to the performance period of the contract.
13. In the lawsuit, you can ask the other party to bear all the losses, and don't give up any claims that are beneficial to you.
14. The parties concerned shall agree on the basis and evaluation methods for the patented technology to reach the above indicators, such as industry standards, expert appraisal or other means.
15. The parties shall clearly stipulate the place of performance or the operation method that can determine the place of performance.
16. Relevant parties should clearly agree on specific standards, indicators, parameters, data, etc. It is planned to pass the acceptance, or it shall conform to international standards, national standards and industry standards.
17. When a breach of contract is agreed, both parties should clearly agree on how to calculate the loss caused by one party's breach of contract to the other party when it exceeds the amount of breach of contract: the amount of breach of contract is regarded as the amount of loss compensation, and no additional loss compensation is calculated; Still need to compensate for the lack of money for breach of contract.
18. Both parties to the contract should also state in the contract that they have no objection to the understanding of the terms.
19. The limitation of action for patent licensing contract disputes is two years. Both sides must claim their rights within two years. When the other party fails to fulfill its contractual obligations, it will send a reminder letter and keep the reminder evidence.
20. The contract not only stipulates the ownership and sharing of the technical achievements of the subsequent improvement, but also stipulates the appraisal institutions and procedures for the subsequent technology. Both parties shall reach an agreement on whether to conduct technical appraisal by a special technical appraisal center or technical consultation by relevant experts, and make a specific agreement in the contract.
2 1. The contract termination conditions agreed by both parties shall comply with the relevant provisions of the law.
22. When the licensor is the patentee and other non-patentees, the modification and termination of the contract shall be agreed by the patentee and other non-patentees.
23. According to the carrier of patented technology, different parties should clearly agree on what delivery method to take for transfer, which is by means of transportation, express delivery, fax, mail, etc.
24. The parties to a contract should realize that a conditional contract only takes effect when the conditions are met.
25. If the patent licensing contract may not be fulfilled due to the breach of contract by a third party, one party to the contract shall actively take remedial measures to avoid further losses.
26, the contract shall clearly record the patent application date, application number, patent number and the validity period of the patent right and other patent related information.
27, the parties shall, in accordance with the principle of mutual benefit, clearly stipulate in the patent licensing contract the ownership and sharing method of technological achievements in the subsequent improvement and use of patented technology. Specifically, both parties should provide their respective technical improvements to each other in a timely and free manner, or they should be owned by one party or shared in other ways.
28, the parties have contributed to the improvement, should save evidence to prove that they have contributed to the improvement.
29, acceptance considerations
① Both parties shall clearly agree on the acceptance place, such as the work place of Licensor or the location of Licensee.
(2) No matter what method is agreed in the contract for acceptance, it shall be agreed that the acceptance certificate and documents shall be issued by the acceptance party in duplicate, one for each party.
③ Both parties to the contract shall agree on the acceptance period. After the Licensor delivers the patented technology, the Licensee shall conduct acceptance within a reasonable period after acceptance, and notify the other party of the acceptance result in time.
(4) Both parties should actively seek solutions, instead of passively waiting after disputes arising from unqualified initial inspection. It should be stipulated in the contract that after the initial acceptance of the subject matter of the contract is unqualified, who will be responsible for the acceptance fee and how to share it will be determined through multiple acceptance evaluations.
30. The parties shall clearly stipulate the total transaction amount of the technology contract.
3 1. If one party's organization is dissolved, the undertaker of its contractual rights and obligations.
① Both parties shall clearly stipulate in the contract the undertaker of the rights and obligations of the contract when one party is dissolved during the performance of the contract: if one party is in the changing period of dissolution when the contract is concluded and can foresee the successor of its rights and obligations, the name of the specific successor shall be clearly stipulated in the contract. At the same time, it must be agreed that one party shall promptly notify the other party of the dissolution of the organization and the responsibility for violating this obligation.
During the performance, both sides should pay attention to the change of each other's topic. If there is any change or dissolution, we should pay attention to which legal person or organization inherits its rights and obligations, and collect relevant evidence to prove the above facts.
32. Signature and seal: The signatures of both parties should be clear and correct, and if it is a group, it should be stamped with the official seal.
33. The parties shall clearly stipulate what to do when the patent right is revoked and declared invalid, and which party shall bear the responsibility.
34. Both parties shall clearly stipulate the scope of force majeure, the way of notification and proof after encountering force majeure, whether both parties can terminate the contract due to force majeure, whether they can claim compensation for performance problems caused by force majeure, and under what circumstances.
35. After the signing of this contract, if the residences of both parties change, both parties shall notify each other and keep the evidence.
36. When the patent licensing contract signed by both parties and other labor contracts coexist in one agreement, the respective proportions of patent licensing fees and labor remuneration shall be clearly stipulated.
37. If the contract is terminated, the other party shall be notified in writing and the evidence shall be kept.
38. Patent licensing contracts can be revoked because of obviously unfair. The revocable period is one year from the date when the parties know or should know the reasons for revocation, and the parties must claim their rights within one year.
39. The parties concerned shall clearly stipulate the quality defects of patented equipment installed by users, the way to determine the defects and the way to bear the responsibilities.
40, the way to solve disputes
The parties may agree to choose one of the four solutions: negotiation, mediation, arbitration and litigation.
(2) Where litigation is agreed, only the domicile of the defendant, the place where the contract is performed, the place where the contract is signed, the domicile of the plaintiff and the jurisdiction of the place where the subject matter of the contract is located can be agreed, and only one court can be agreed. If the agreement is not clear, two or more courts are selected for jurisdiction, or courts other than the above five courts are agreed, or arbitration and litigation are agreed, such dispute settlement clauses are invalid.
(3) If arbitration is agreed, the arbitration institution and arbitration matters shall be clearly agreed.
4 1. When both parties entrust lawyers or others to handle contract matters on their behalf, they should not be given too many rights. All matters such as investigating evidence, appearing in court on behalf of the agent, self-reconciliation, accepting mediation, admitting, changing, giving up litigation request, filing counterclaims, appealing, applying for withdrawal, applying for enforcement, signing relevant documents on behalf of the agent, and entrusting rights shall be prevented from being damaged.
42. Both parties should agree on the authority of their own internal personnel, and prohibit unauthorized personnel from abusing the official seal of the unit and signing to perform various contract matters with the other party, especially not expressing their intention that is inconsistent with the contents of the contract and their own interests.
43. The so-called restrictive clauses are clauses that stipulate in the contract the scope for the assignor or assignee to exploit the patent or use the patented technology. Reasonable restrictive clauses are protected by law. Both parties have the right to determine the nature of the contract according to the actual situation, so as to stipulate the scope and extent of the technology used by both parties. For example, the transferee has the right to re-transfer the technology according to the sub-sale license contract; The transferor in an exclusive license contract can not only transfer the technology, but also not use the technology within a certain range.
44. After a patent licensing contract is concluded, it shall be filed in China National Intellectual Property Administration within 3 months after the contract comes into effect.
45. Both parties to the contract shall stipulate in the contract the list and number of copies of relevant materials for inspection.
46, after the dispute between the two sides, the need to identify the patented technology, first of all, should be identified by the agreed institutions, unilateral inspection should be confirmed by the other party.
47. Both parties to the contract shall specify the main contract, relevant vouchers and relevant accounting materials in the contract as annexes to this contract. And after the contract is signed, properly keep the contract and the main contract, relevant vouchers, relevant accounting materials and other contract attachments.
48. Both parties to the contract should correctly distinguish the relationship between the unit and the person in charge of the unit, and should clearly realize that the person in charge of the unit cannot represent the unit in his own name.
49, the parties should clearly agree on the standard of local improvement and substantive improvement, and distinguish the two.
50. Matters needing attention at the end of the contract
(1) Both parties shall clearly indicate the signing time at the end of the contract.
(2) This contract shall be clearly stated in several copies, with each party holding one copy.
5 1, force majeure
① In case of force majeure, one party shall notify the other party in time as agreed and prove it to the other party.
(2) After the occurrence of force majeure, one party shall keep the performance evidence when notifying and proving the other party in time according to the contract.
52. In the contract, it should be clearly stipulated that if one party is separated during the performance of the contract, the undertaker of its contractual rights and obligations: if one party is in the change period of company separation when signing the contract, and the other party can foresee the organization that will be separated after the change, it should be clearly stipulated in the contract that the specific undertaker of contractual rights and obligations after separation shall bear the rights and obligations of the contract or one party shall bear joint and several liabilities; When a contract is concluded, it is impossible to predict whether one party will be divided. In order to avoid disputes, if one party has differences, the distribution principle of contractual rights and obligations can also be agreed in the contract.
53. Both sides should correctly restrain their own internal personnel to prevent employees from doing behaviors that are unfavorable to them after being bought by the other side. In addition, they should not use improper means to buy off the other party's personnel in an attempt to avoid fulfilling their contractual obligations.
54. Pay attention to confidentiality.
(1) Confidentiality: Both parties shall clearly stipulate that both parties shall be obligated to keep the patented technology confidential, and neither party shall disclose it without authorization, otherwise it shall bear corresponding responsibilities. However, if the contract is transferred by general license, the licensor will license the patented technology to others for use, which does not violate the confidentiality provisions.
(2) Confidential object: Both parties to the contract should clearly agree on the confidential object, list it in detail and illustrate it with examples, and also agree on some exceptions under certain circumstances.
(3) Scope of confidentiality: both parties to the contract should clearly agree on the scope of confidentiality, which regions and industries should be kept confidential, and some exceptions that should be agreed for some needs.
(4) Both parties to the contract shall strictly limit the scope of personnel who know the business secrets, and make specific agreements by listing or other means.
⑤ Confidentiality method: Both parties shall clearly agree on specific methods and measures to implement confidentiality.
⑥ Secrecy period: The parties should clearly stipulate the specific confidentiality period of confidential matters in the patent licensing contract, instead of only having an estimate without specifying the specific time period and time point.
⑦ Independence of confidentiality clause: Both parties may agree that the confidentiality clause of this contract will remain valid without its restrictions regardless of whether this contract is modified, dissolved or terminated, and each party shall continue to undertake the agreed confidentiality obligations.
(8) If the contents of the contract involve national security, vital interests and other national scientific and technological secrets that need to be kept confidential, the scope, classification and duration of the confidential matters and the confidentiality obligations of all parties shall be clearly defined in the contract.
Precautions for Licensee
1, patent technology effectiveness review
The patent licensing contract is only valid within the term of the patent right, and the licensee has not carefully examined whether the patent expires or is declared invalid due to failure to pay the annual fee, or whether the patent technology is claimed by a third party. May lead to the invalidation or invalidation of the patented technology of the subject matter of the contract within the validity period; Or the third party claims the right to the technology when implementing the technology, which affects the licensee's normal implementation of the patent.
Licensee shall strictly investigate the patented technology licensed by Licensor to confirm whether the patented technology is valid, expired or declared invalid due to failure to pay annual fees. Whether there is any right defect, whether there is a third party claiming the right to the same patented technology.
Step 2 know in advance
(1) The licensee should fully understand the performance credit and cooperation spirit of the licensor before signing the contract.
(2) Licensee shall fully understand Licensor's technical ability and level: whether there are technical experts or personnel engaged in related professional fields involved in technical work; Whether the educational background, technical titles, awards, previous technical work in similar fields and technical level of the personnel involved in R&D by Licensor are recognized.
③ Work experience survey. Investigate whether Licensor has engaged in relevant technical work.
3. The parties shall clearly stipulate the performance of the patented technology to be transferred and the relevant technical and economic indicators to be achieved.
4. It should be stipulated in the contract that the licensor should guarantee that it is the legal owner of the patent provided, and that the technology provided is complete, error-free and effective, and has achieved the agreed objectives.
5. The contract shall specify the scope and specific content of technical guidance provided by both parties to Licensor.
6. The payment methods of technology use fees include one-time payment, installment payment, royalty payment or royalty payment plus prepaid entry fee. The terms of payment should be clearly stipulated in the contract.
7. The parties shall clearly stipulate whether the R&D stage and technical maturity of the patented technology belong to the patented technological achievements that have been commercialized or are still in the experimental stage or pilot stage.
8. The parties may clearly stipulate that Licensor shall be responsible for the economic benefits of Licensee after implementing the technology, that is, it shall stipulate that Licensor shall ensure that Licensee reaches the agreed economic benefit index.
9. Technical guidance
(1) Both parties to the contract shall clearly agree on the ways for Licensor to provide technical guidance, including technical guidance, training, communication, on-site operation and problem solving.
(2) The parties to the contract shall clearly stipulate the time limit for Licensor to provide technical guidance.
10. When both parties sign a patent license contract for the subordinate patent, the licensor must obtain the authorization of the patentee of the basic patent in advance.
1 1. The parties shall determine the ways for both parties to use the patented technology: there are mainly the following three ways: exclusive license, exclusive license and general license.
12. After obtaining the patented technology, the licensee shall pay the price as stipulated in the contract.
13, the parties shall clearly stipulate the settlement period of remuneration.
14. If the transferee needs to license the transferred patent to a third party for implementation, such as cooperation with others, joint venture implementation, etc., the relevant conditions and matters shall be clearly stipulated in the contract.
15. The licensee shall not exploit the patent beyond the agreed scope. The licensee's use of the patent is beyond the agreed scope. The licensee shall stop the illegal act, bear the liability for breach of contract, pay liquidated damages or compensate the losses.
16, accepted by the licensee.
(1) The Licensee shall keep the performance evidence when issuing the acceptance certificate and documents.
(2) Within a reasonable period after acceptance, Licensee shall notify the other party of the acceptance result in time.
(3) After the transferee finds that the patented technology is not in conformity with the contract in the last acceptance, it shall promptly inform the transferor of the acceptance result and put forward suggestions for terminating the contract, and keep relevant evidence to prove the unqualified acceptance.
(4) After Licensor correctly performs the contract, Licensee shall receive the patented technology within the specified time.
17. The Licensee shall keep the evidence that the remuneration has been paid to the Licensor according to the contract, so as to prevent future disputes.
18. Both parties to the contract shall agree on the disposal method of the inventory products after the termination of the contract.
19. When drafting a contract, it should be noted that the validity of the contract shall not exceed the term of the patent right.
20. When concluding a patent licensing contract for * * * patents, the parties concerned shall obtain the consent of the owner of * * *.
2 1. When signing an exclusive exploitation license contract, it shall ensure that the transferor has not signed a patent exploitation license contract with a third party within the same scope.
22. If the licensor sells the patent to a third party for licensing according to the previous patent licensing contract, the licensee shall investigate whether the licensor has entered into a patent licensing contract according to the compulsory licensing decision, otherwise it has no right to license others.
23. The transferee shall, in accordance with the agreed scope and time limit, undertake the obligation to keep confidential the undisclosed secret part of the technology provided by the transferor.
Precautions for Licensor
1. Licensor shall investigate the assets and reputation of Licensee.
① Fully understand the performance credit, cooperation spirit and confidentiality of the licensee before signing the contract.
② Fully understand the technical level and technical digestion ability of the licensee. In order to avoid putting a lot of energy into technical guidance after the implementation of patent licensing, if it is inevitable, a higher remuneration amount should be agreed in the contract in advance.
2. Payment method
① The agreed royalty payment method shall clearly stipulate the royalty standard, proportion and relevant explanations. For example, you can make a commission according to a certain proportion of the new output value, profit or product sales after the patent is implemented; The proportion of royalty payment can be fixed, increasing year by year or decreasing year by year.
(2) If the royalty payment method is agreed, the parties concerned shall agree in the contract to consult the relevant accounting accounts.
(3) No matter what service method is adopted, the evidence of service shall be retained.
3. Licensor shall provide necessary technical guidance as agreed.
4. Licensor shall keep the performance evidence when submitting the list and copies of relevant materials.
5. The assignor shall license the assignee to exploit the patent as agreed, and deliver the technical data related to the exploitation of the patent.
6. In order to ensure that the patent right is valid within the validity period of the contract, the parties shall agree who will pay the annual patent fee and actively respond to the request of others to declare the patent right invalid.
6. When acceptance is required, Licensor shall require Licensee to submit the acceptance certificate and agreed documents.
7. Licensor shall not require the technology recipient to accept the necessary conditions for implementing the technology.
8. If the contract stipulates that the royalty shall be settled according to the actual sales, it shall also stipulate that the Licensee has the obligation to inform the Licensor of the operation of the product.
9. Licensor's acceptance of Licensee's overdue payment of the transfer fee and its request to the other party to continue to pay the transfer fee as agreed in the contract shall be regarded as its waiver of the right to unilaterally terminate the contract.
10. Licensor shall claim tort liability for Licensee's continued use of the patented technology after the termination of the transfer contract, not liability for breach of contract.
1 1. The parties shall clearly agree on the field in which the patent should be used.
12. The fees and payment methods related to the technical guidance provided by Licensor shall be clearly agreed.
13. The parties shall clearly stipulate the time limit for the patent exploitation license, which shall not exceed the time limit of the patent.
14. The parties may stipulate who will bear the responsibility when the transferee infringes on the legitimate rights and interests of others by implementing the patented technology in accordance with the agreement.
15. The agreed royalty payment method shall clearly stipulate the royalty standard, proportion and relevant explanations. Licensor shall also provide evidence to prove the sales of Licensee to determine the amount of transfer fee.
When signing a patent licensing contract, both parties should pay attention to the above details, go through relevant procedures in strict accordance with the law, and avoid legal risks to the maximum extent.