I. Patent investment process.
Shares in a patent need to be appraised by a specific asset appraisal institution. Patent right, as a kind of intellectual property right, can be used as a form of capital contribution for the establishment of enterprises through monetary valuation, and must be handled in accordance with the prescribed procedures.
1. Shareholders * * * sign the Articles of Association, and stipulate their respective capital contributions and modes.
2, by the patentee in accordance with the law entrusted by the financial department approved the establishment of an asset appraisal institution to assess, and go through the formalities of patent change registration and announcement.
3. industrial and commercial registration issued the corresponding appraisal report, written opinions of relevant experts on the appraisal report, business license of the appraisal institution and patent transfer procedures.
4. Where a foreign party contributes industrial property rights or proprietary technology, it shall submit relevant materials of the industrial property rights or proprietary technology, including a copy of the patent certificate or trademark registration certificate, the effective status, its technical characteristics, practical value, the calculation basis of pricing, the pricing agreement signed with the China party and other relevant documents as annexes to the joint venture contract.
Second, some problems of patent investment.
Article 27 of the Company Law: "Shareholders can make capital contributions in cash, or they can make capital contributions in kind, intellectual property rights, land use rights and other non-monetary properties that can be valued in money and can be transferred according to law; However, except for the property that cannot be used as capital contribution as stipulated by laws and administrative regulations. Non-monetary property as capital contribution shall be evaluated and verified, and its value shall not be overestimated or underestimated. Where there are provisions in laws and administrative regulations on evaluation and pricing, those provisions shall prevail. The monetary contribution of all shareholders shall not be less than 30% of the registered capital of a limited liability company. "
Article 7 of the Regulations on the Administration of the Registration of Registered Capital of Companies shall be appraised by an asset appraisal institution with appraisal qualification and verified by a capital verification institution. Article 8 Shareholders or promoters may make capital contributions in currency, or they may make capital contributions in kind, intellectual property rights, land use rights and other non-monetary properties that can be valued in currency and transferred according to law. Where a shareholder or promoter contributes capital with property other than currency, physical objects, intellectual property rights and land use rights, it shall comply with the relevant provisions formulated by the State Administration for Industry and Commerce in conjunction with relevant departments of the State Council. Shareholders or promoters shall not make capital contributions at a fixed price in the form of labor service, credit, natural person's name, goodwill, franchise or secured property. Article 9 Shareholders or promoters must contribute capital in their own names.
Patent right is a kind of intellectual property right, which can be used as the object of investment. However, whether the right to apply for a patent and the right to implement a patent also belong to intellectual property rights, and whether they can be used as the target of shareholders' investment and shareholding is controversial in practice.
1, determination of patented technology shares.
The procedure for shareholders to set up a joint-stock company is to sign a contract, formulate the articles of association, and determine the amount and mode of capital contribution of shareholders. Once the shareholders sign the contract and articles of association, they are bound by the articles of association and must fulfill the obligations of the amount and method of capital contribution stipulated in the articles of association. Shares in patented technology must be valued, and then the patentee shall go through the registration and announcement procedures for the transfer of the patent right to the invested company in accordance with the contract and articles of association for the establishment of the company, and the industrial and commercial registration authority shall determine the shareholders who share in patented technology to fulfill their capital contribution obligations in accordance with the procedures for the transfer of the patent right. However, in practice, some industrial and commercial registration authorities do not take the completion of the patent transfer registration and announcement procedures as the essential elements of the patent technology shareholding, but take the patent transfer contract between the shareholders and the invested company as the basis of the patent transfer, and some take the patent implementation license contract as the basis of the patent technology shareholding procedures, which is easy to cause disputes over whether the shareholders fulfill their investment obligations.
First, can the right to apply for a patent become the object of shareholders' investment?
The right to apply for a patent refers to the right of the person who has the right to apply for a patent to request the patent office to grant a patent right for invention and creation. According to the provisions of China's patent law, the right to apply for a patent is transferable, and it is stipulated that the transfer of the right to apply for a patent must be registered and announced by the patent office before it can take effect. This shows that the right to apply for a patent is a transferable civil right with property content, and registration and announcement are important elements to make intangible inventions public. Therefore, it is also necessary. However, whether the law allows it or not, we should define the legal nature of the right to apply for a patent before we can draw a conclusion.
1. Patent application right is not intellectual property.
The object of patent application right is invention and creation, while the intellectual property right with invention and creation as the object is only patent right. The fundamental difference between patent right and patent application right is that the patent right must be examined by the patent office, and the invention-creation that meets the patent technical conditions is given the exclusive right to exploit, while the patent application right is only the subjective desire of the patent applicant to apply to the patent office for the patent right for invention-creation. The invention-creation pointed by the object of the patent application right does not have exclusive rights, and the patentee cannot exclude others from the right to use his invention-creation based on the patent application right. Only the right to apply for a patent for invention-creation can enjoy the right of temporary protection after substantial examination by the patent office, so the right to apply for a patent does not have the nature of intellectual property.
2. Patent application right is different from non-patented technology.
Non-patented technology realizes its intangible asset value by means other than patent, and its important feature is the self-preservation of technical secrets, and the law gives necessary protection to those who have fulfilled their confidentiality obligations to stop illegal theft of technical secrets. The right to apply for a patent is based on public technology, and its purpose is to obtain the monopoly right to implement a certain technology through patent authorization. Therefore, although the technology in the patent application stage is also in the state of non-patented technology, the protection methods of the two are completely different. Therefore, the right to apply for a patent does not belong to the category of non-patented technology. However, before the publication of the patent application right, if the patent applicant withdraws the patent application, it may be converted into non-patented technology.
3. The right of patent application is the right of patent expectation.
The right to apply for a patent is the possibility of granting a patent after the applicant applies to the patent office; That is, whether the patent right can be obtained depends on whether the patent office authorizes it. If authorized by the patent office, the right to apply for a patent will be transformed into a patent right, and the right to expect will become an established right. Without authorization, the technology pointed by the patent application right has no property value. Therefore, the right to apply for a patent is a right to expect the invention to be granted a patent right, which cannot be used as the object of capital contribution.
Second, whether the right to use the patent can be used as the object of shareholders' investment.
Patent exploitation right is a kind of right derived from patent right, which means that the patentee transfers the patent exploitation right to others by signing a patent exploitation license contract, and others enjoy the right to exploit the patent. Usually, the licensee has to pay the consideration to get the patent right. It is precisely because the right to use a patent has the characteristics of being transferred by the patentee to others that it is easier to share shares with the right to use a patent than with the patent. Therefore, it has become a common economic phenomenon to use the right to use patents as capital for shares.
There are several remarkable characteristics of taking shares with the right of patent implementation:
(1) Shareholders and patentees are the same. If the patentee changes, so will the shareholders.
(2) Shareholders retain the patent right and transfer the patent exploitation right to the invested enterprise as registered capital when the enterprise is established. Shareholders have the obligation to safeguard the patent right.
(3) The shareholders transfer the patent exploitation right by means of a patent exploitation license contract, and the content of the patent exploitation right is stipulated in the contract. The right to patent exploitation can be agreed by general license or determined by exclusive license, and the transfer of the right to patent exploitation pointed to in the patent exploitation license contract does not need to be registered and announced.
(4) The patentee may collect fees for the transfer of the patent exploitation right, which shall be collected as shares in order to obtain shareholders' rights.
(5) The right to use a patent does not have the effect of directly excluding the infringement of others, and its rights and interests can only be realized by the patentee, that is, the shareholder, exercising the right to compensation for damages. Because of the operability of patent enforcement right, it is also understood as patented technology. Therefore, there is no doubt about its legitimacy, but there are great legal flaws in the patent implementation right becoming the object of shareholders' capital contribution.
First of all, the patent enforcement right is not an intellectual property right, but a creditor's right with the patent right as the subject matter, and there is no legal basis for taking this creditor's right as the subject matter of shareholders' capital contribution. Intellectual property is a right to the world. According to intellectual property, the obligee can directly enforce his rights without the help of others. For the infringement of others, the obligee can directly file an infringement lawsuit based on intellectual property rights. The patent exploitation right is a human right, that is, the obligor of the patent exploitation right is the patentee, and the patent exploitation license contract is only binding on the patentee and the patent exploitation licensee. When others have the infringement of producing and selling patented products, only the patentee can exercise the claim for damages, and the patentee can only exercise the claim for joint damages according to the license contract. Patent right is a kind of domination. The patentee may directly exploit the patented technology in the form of a patent exploitation license contract, or dispose of the patented technology, or transfer it to others, or allow others to exploit the patented technology, while the patentee can only exploit the patented technology by himself within the scope agreed in the contract, but cannot dispose of the patented technology. It can be seen that the patent enforcement right belongs to the creditor's right in nature, that is, the creditor's right with the patent as the object and the scope of patent implementation as the content, and this creditor's right cannot be used as the object of investment and shareholding of a limited liability company.
Secondly, the legal consequences of investing in shares with the right of patent implementation conflict with the provisions of the company law, which is embodied in the following aspects: First, the company law stipulates that shareholders must obtain the consent of other shareholders when transferring shares, while the patentee shares with the right of patent implementation. Because it is a contractual act, the right of patent implementation transferred by contract is not registered and announced as a public way. Therefore, if the patentee transfers its patent, the new patentee may not know that the right of patent implementation has become a shareholder, which will lead to the new patentee and the owner of the patent. The result of resolving this conflict is bound to conflict with the law. If the transferee replaces the transfer of the patent right naturally as a shareholder, it will violate the provisions of the Company Law that the transfer of equity must be approved by other shareholders, and other shareholders have the priority to purchase equity. If the original patentee is allowed to continue to enjoy the rights of shareholders, the right to exploit the patent will exist without the patent right, which is in contradiction with the patent law.
Second, according to the provisions of the Patent Law, the patentee can sign multiple patent licensing contracts with others, which may lead to the situation that the right to exploit the same patent is invested in different enterprises many times. If the patentee holds the position of director or manager, it will violate the provisions of the Company Law prohibiting directors and senior managers from competing in the same industry. In addition, the value of patent exploitation right is uncertain, that is, the more patent exploitation right is set, the lower its value, and the clauses restricting the patentee from setting patent exploitation right only have contractual effect, but not exclusive effect. Even if it is agreed that the patentee will take an exclusive license for the patent exploitation right, once the patentee violates the agreement and sets up the patent exploitation right indiscriminately, it can only investigate the patentee's liability for breach of contract, but can't stop other patent exploitation behaviors that have obtained the patent exploitation right in good faith, and it is difficult to effectively protect the legitimate rights and interests of the invested company.
Third, the right to use the patent is a right attached to the patent right, because the right to use the patent belongs to the nature of creditor's rights. Once the patentee is eliminated, the patent exploitation right naturally returns to the patentee. Therefore, once the right to use the patent is invested in the invested company and the company is liquidated due to bankruptcy or dissolution, it will form that the right to use the patent cannot become liquidation property, which will have adverse legal consequences for the company's creditors and other shareholders, and the shareholders who have invested in the right to use the patent will recover the right to use the patent. This obviously violates the principle of fairness of the law.
3. Changes in the interest value of the patented technology after its shareholding.
Patent technology is an intangible property, and its value can only be reflected by combining its production factors, and the proportion of production factors is a variable, so the value evaluation of patent technology has great flexibility and is often overestimated or underestimated. For overvalued patents, the company law of our country stipulates that the shareholders who contribute capital make up the difference, and other shareholders shall bear joint and several liability for them when the company is established.
However, when the value of patent right is underestimated, there is no clear legal provision. The author believes that this situation can be solved in two ways:
First, adjust the interest relationship by expanding the shareholding ratio of shareholders with patented technology;
Second, without expanding the shareholding ratio of patented technology shareholders, other shareholders will increase their investment to expand the scale of production, so that patented technology shareholders can obtain corresponding benefits.
Four, the tax issue of patent shares.
According to the Individual Income Tax Law of People's Republic of China (PRC) and its implementing regulations, and the Official Reply of State Taxation Administration of The People's Republic of China on Personal Income Tax Issues Concerning Individuals Investing in Shares with Patented Technology and Transferring Ownership of Patented Technology (Guoshuihan [1998] No.621), the equity income obtained by natural persons by investing in shares with proprietary patented technology should be recognized as "royalty income".
According to the Notice of State Taxation Administration of The People's Republic of China, Ministry of Finance of People's Republic of China (PRC) on Business Tax on Equity Transfer (Caishui [2002] 19 1No.):
(a) intangible assets, real estate investors to participate in the distribution of profits of the grantee, * * * with technical risks, no business tax.
(2) No business tax is levied on equity transfer.
(3) The provisions in Articles 8 and 9 of Notes on Business Tax Items (Trial Draft) (Guo Shui Fa [1993] 149) which are inconsistent with this document shall be abolished.