So, what is the specific process of patent shareholding? How much tax do you pay? What legal risks should be paid attention to as a non-technical investor in the face of venture partners' shareholding in patented technology?
Relevant laws and regulations
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. If there are provisions in laws and administrative regulations on evaluation and pricing, such provisions shall prevail. "
Capital contribution process
To buy shares by patent, assets need to be evaluated. 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. The applicant or his entrusted agent shall apply to the registration authority, issue the corresponding evaluation report, the written opinions of relevant experts on the evaluation report, the business license of the evaluation institution, and go through the formalities of patent right transfer.
4. If the registration authority makes a decision to approve the change of registration, it shall issue a notice of approval of the change of registration and issue a new business license.
5. Other registration procedures stipulated by laws and regulations.
Personal tax policy
According to the policy of the Ministry of Finance
According to the Notice of State Taxation Administration of The People's Republic of China on Personal Income Tax Policies for Personal Non-monetary Assets Investment (Caishui [2015] No.41), an individual's investment in non-monetary assets belongs to the transfer of non-monetary assets and investment at the same time. Income from the transfer of non-monetary assets by individuals shall be accounted for and paid according to the item of "income from property transfer". The non-monetary assets mentioned in the Notice refer to assets other than cash, bank deposits and other monetary assets, including equity, real estate, technological inventions and other forms of non-monetary assets.
Calculation Method According to the Company Law, Accounting Standards for Business Enterprises and Individual Income Tax Law, non-monetary assets should be appraised and priced, and recorded accordingly. The fair value after evaluation is the transfer income of non-monetary assets.
Taxable income = income from transfer of non-monetary assets-original value of assets-reasonable taxes and fees paid according to regulations at the time of transfer.
Taxable amount = taxable income ×20%
For example, A shares in a patent company at an evaluation price of 20 million yuan. When obtaining the patented technology, the appraisal fee, agency fee and other related taxes and fees are 654.38 million yuan, and some expenses are 200,000 yuan, Mr. A should pay personal income tax of 3.94 million yuan (2000- 10-20) × 20%.
What legal risks should be paid attention to as a non-technical investor in the face of venture partners' shareholding in patented technology?
First, do a good job of due diligence before investing.
1, subject qualification examination
(1) Require the patentee to provide the patent ownership certificate, patent specification, patent claim, the latest annual fee payment certificate and other documents to confirm that it owns the contributed patent. Usually, the right holder registered on the patent certificate is the real patentee, but the patent certificate is issued according to the patent register. When the patent subject changes, only the copy is changed, and the patent subject is identified as risky only based on the certificate. Therefore, while examining the patent certificate, it should be further examined by China National Intellectual Property Administration Patent Office.
(2) Whether there is any situation of performing duties, accepting entrustment or cooperating with others.
In real life, citizens often invest in patented technology research, especially in the field of invention, which may require more investment. Whether the patent right belongs to an individual or an investor needs to be clearly defined. For example, China's patent law stipulates that the patented technology developed by the inventor using the material resources of the unit shall be owned by the unit during the performance of his duties; Unless otherwise agreed by the parties, the right to apply for a patent for an invention-creation jointly completed or entrusted by both parties belongs to the completing unit or individual. Therefore, it is suggested that in the process of subject review, the relationship between patent technology developers and whether there is any relevant agreement between them should be clarified, and the patentee should be required to make relevant written statements.
(3) The assignment of a patent depends not only on the assignment contract, but also on whether the patent has been registered with the patent administrative department in the State Council, otherwise the investor has not become the real patentee.
2, object qualification examination
(1) Whether the patent right is terminated.
Some patents may be terminated according to law for reasons such as failing to pay the annual fee according to regulations, and the terminated patents enter the public domain and can be used without spending money. Therefore, for non-technical investors, it is of great significance to know whether the patent has been terminated.
(2) The regional effect of patent right.
Patents obtained in accordance with the laws of a country are only protected by law in that country, and are not protected by law in other countries, unless the two countries have bilateral patent (intellectual property) protection agreements or * * * participate in international conventions on patent protection (intellectual property). Therefore, if the products manufactured by the patented technology are intended to be sold abroad, it is suggested to accept whether the patent right is valid at the place where the products are intended to be sold before the patent shares are invested, otherwise the exported products are likely to be accused of patent infringement.
(3) the validity period of the patent right.
The term of invention patent right is 20 years, and the term of utility model patent right and design patent right is 10 years, counting from the date of application. After the expiration of the protection period, the patented technology will enter the public domain and cannot monopolize its interests. Therefore, as a non-technical investor, it is necessary to examine the remaining validity period of a patent. The shorter the remaining validity period of a patent, the lower its commercial value.
(4) Whether the patent right is licensed-this is the top priority of due diligence on patent ownership!
Patent license includes three ways: exclusive license, exclusive license and general license.
A. Exclusive license means that no third party except the licensee, including the obligee, may exploit the patent within the license period.
B. Exclusive license means that no third party except the licensee and licensor may exploit the patent within the license period.
C. General license means that the licensee has the right to exploit the patent within the license period, and the licensor can exploit the patent by himself or license a third party to exploit the patent within the license period.
Regarding the way of patent licensing, if the agreement is not clear, it will be regarded as a general license. Therefore, it is very important to know whether the patent right is licensed in advance, which is of great significance to companies that accept patent shares:
-If an exclusive license or exclusive use license has been issued to the outside world and a lawsuit has been filed against a third party, it is suggested that the patentee can no longer accept any form of license, otherwise the patent can not be used even if it has been paid, and the patentee can only be held liable for breach of contract; -If you have issued a general license, you need to evaluate whether the previous patent license will affect your business interests.
(5) Whether the patent right is pledged.
If the patent right has been pledged, once the patentee is unable to pay off the debt, the creditor has the right to discount the price of the auction or sale of the patent or give priority to compensation. Therefore, it is suggested that companies that accept patent shares should investigate whether there is patent pledge.
(six) whether there is a legal dispute over the patent right.
It should be investigated whether the patent right exists in the following situations: a. whether the third party requests to declare the patent invalid for various reasons; The third party accuses the patentee of infringing his prior rights, such as patent right; C. The third party asks to confirm that he is the owner of the patent right, and so on.
(seven) the contents of the patent right for shares.
Is it funded by the ownership of the patent right, or by the right to use or apply for the patent? At present, there are different views on whether the right to use a patent and the right to apply for a patent are feasible in theory. In practice, patent ownership is the most common and safest investment.
(8) Whether the patent lacks substantive conditions for authorization.
You can entrust a professional organization to search whether the target patent has defects in novelty, creativity and practicality, so as to evaluate whether the patent may be declared invalid.
(9) Speaking of "combined patents".
In some patent pools, it seems that there are several different patents, but they are actually patents with the same technical theme, only using different names, or only expressing differences in patent application documents, and investors in patent technology are likely to invest these "several names, but actually one" patents in the company as assets to achieve the purpose of increasing investment.
Secondly, do a good job in risk prevention measures in the process of patent investment.
1. Conclude a strict patent investment agreement.
(1) When signing a patent contribution agreement, the name, patent number and attached technical data of the patent must be clearly defined in the agreement. More importantly, it is necessary to agree on the time for handling transfer registration and other procedures and the time for handing over all kinds of documents and materials related to patent ownership. It is suggested that before the effective transfer of the patent right is completed, the non-technical investor should clearly stipulate the time for handling the transfer registration and other formalities in the investment agreement, and hand over all kinds of documents and materials related to the ownership of the patent right, and at the same time set up corresponding liability clauses for breach of contract.
(2) If the investment is made with the right to use the patent right, since the investor still retains the ownership of the patent right, the obligation to pay the annual patent fee shall still be borne by the investor. Therefore, for non-technical investors, we should pay attention to prevent the risk of patent invalidation because the patentee fails to pay the annual fee on time. In this regard, it is suggested that non-technical investors can set relevant clauses on the right to know and liability for breach of contract in patent investment agreements.
(3) clearly stipulate the proportion of patent investment and the corresponding dividend terms. When accepting patent investment, enterprises often rely on the evaluation results of patent value made by evaluation institutions. However, in most patent investment projects, the expected return of patent investment is far from the actual situation. Therefore, it is suggested that non-technical investors should set fair and reasonable benefit distribution or share adjustment clauses acceptable to all parties on the premise of clearly agreeing on the proportion of patent investment, so as to avoid the deadlock that the value of patents invested by patentees is greatly reduced due to various influences, but dividends must be paid according to the proportion of investment.
(4) It is necessary to clearly define the distribution of patented technology improvement achievements. Companies that accept patent investment are often not satisfied with the use of patented technology, and patentees are more likely to create more advanced technologies and obtain patents through the same principle.
(5) It must be clearly stipulated in the agreement to undertake the liability for patent defects. Patent investors will invest in patents in order to invest in the company through all their patent capital instead of monetary capital, and obtain shares, and get the corresponding share of equity dividends while the company is operating and developing. It is suggested that it can be clearly stipulated in the agreement that if the company faces infringement disputes due to the patent right invested, the investor shall bear all the liability for compensation.
2. Handle the contradiction between the instability of patent capital and the principle of corporate capital stability.
According to the Property Law, the patent right has been invested, the investor of the patent right has fulfilled the obligation of investment according to law, and the invested patent right is true and effective at the time of investment, and there is no right defect. Then the patentee is not responsible for the risks caused by patent capital in the future business development of the company (such as the risk of capital shrinkage). However, due to the short economic life of patent capital, it is difficult for companies to commercialize patent capital. It is obviously unfair to the company and other shareholders if the company that accepts the patent capital bears the risk. In addition, the newly revised Company Law cancels the requirement that the capital contribution by patent right must be verified by a legally established capital verification institution, that is, on the basis of evaluating the value of patent right, the value of non-monetary capital contribution can be applied for registration as long as other shareholders recognize it.
According to the Company Law, after the establishment of a limited liability/joint stock limited company, if it is found that the actual price of the company's contribution in non-monetary property is obviously lower than the amount stipulated in the company's articles of association, the contributing shareholders shall make up the difference; When the company is established, other shareholders shall bear joint and several liabilities. Therefore, as a non-technical investor, in order to solve the contradiction between the instability of patent capital and the principle of enterprise capital stability, we can set up an annual evaluation system of patent capital and adjust the corresponding share of patent capital when necessary. In the case of significant changes in the value of patent capital, other shareholders of the company are given the right to re-evaluate and adjust the ownership structure. For example, as a non-technical investor, it can be stipulated in the investment agreement that within a certain period of time (usually within two years), the patent investor will bear unlimited capital supplement responsibility for the shrinkage of patent capital value, and will bear fault responsibility for the shrinkage of patent capital value after two years.
In addition, if the time between the actual contribution of the patentee and the subscription of the contribution exceeds a certain period (for example, one year), the value of the patent right should be re-evaluated to confirm whether the patent right has been significantly impaired during this period. If the value of the patent right at this time is too different from the value at the time of subscription, the patent investor may be required to bear the responsibility of making up the capital contribution, or deduct its corresponding share of capital contribution, and the company needs to go through the formalities of capital reduction.
Third, do a good job in risk prevention measures after capital contribution.
1. Handle the transfer formalities of investment patent right as soon as possible according to law.
Article 10 of the Patent Law stipulates that if the right to apply for a patent or the patent right is transferred, the parties concerned shall conclude a written contract and register it with the patent administration department of the State Council, and the patent administration department of the State Council shall make an announcement. The transfer of the right to apply for a patent or the patent right shall take effect from the date of registration. Therefore, if the investment is made by the patent right, the transfer of rights will only take place after the registration by the patent administration department, and the capital contribution procedures will be completed.
2. Sign relevant confidentiality agreements.
At present, patented technology can only be implemented when patents and know-how are transferred together. Therefore, signing a non-competition agreement with patent investors and signing an internal confidentiality agreement with technicians who have mastered these technical secrets can effectively avoid the disclosure of trade secrets caused by the resignation and job-hopping of technicians and reduce the risk of capitalization of patent rights.