1. The patent right is valid.
After the expiration of the patent right, it will become a technology for free use by the society, and no one can pay the patent fee. So, first of all, when the contract is signed, the patent right should be valid. That is, the patent right was not declared invalid or terminated at that time
Secondly, the contract term should be within the patent protection period. The term of the contract shall be clearly stipulated, and it shall be determined that the term of the contract shall not exceed the term of patent protection.
Third, the contract can stipulate that after the termination of the patent right, the contract will also be terminated. If the patentee fails to pay the annual fee, or if the patentee abandons the patent right, the patent right will be terminated and will no longer be protected by law. After the termination of the patent right, the licensee will not have to pay future royalties.
2. The contract may stipulate that the patentee shall provide and deliver the technical data related to the exploitation of the patent to the licensee, and provide necessary technical guidance.
In addition to the technical information disclosed in the patent specification, the patentee often keeps some technical information that is not fully disclosed. Therefore, it can be stipulated in the contract that the patentee should provide other necessary information and provide necessary technical guidance.
3. The patentee of a patent licensing contract shall ensure that he is the legal owner of the technology provided.
If the patented technology involved in the contract has defects in rights, disputes may occur during the performance of the contract. In order to avoid unnecessary disputes, the contract may stipulate that the patentee shall ensure his legal possession of the technology, otherwise he shall bear corresponding responsibilities.
The performance and implementation of the patent licensing contract should also pay attention to:
According to the provisions of the patent law, the decision to declare the patent right invalid has no retrospective effect on the patent licensing contract that has been performed before the patent right is declared invalid. Therefore, it must be noted that after the patent right is declared invalid, you should not pay the patent fee again.
It should be clear that the patent licensing contract only gives the licensee the right to exploit the patented technology, but does not transfer the ownership of the patent right. Therefore, unless otherwise agreed in the contract, the licensee shall not license others to exploit the patented technology.
The conclusion of a patent licensing contract should be made public. Therefore, according to the detailed rules for the implementation of the Patent Law, the patent licensing contract concluded between the patentee and others shall be filed in China National Intellectual Property Administration within 3 months from the date when the contract comes into effect.