As a kind of property right, patent rights can be transferred in trade activities. However, as the object of patent rights, inventions and creations are intangible. This "intangible" nature makes it more likely that disputes will arise during the transfer process than tangible assets. In addition to meeting the requirements of my country's contract law, In addition to the general requirements, Zhongyi Patent believes that the following issues should also be paid attention to.
Confirm the type and legal status of patent rights
According to the provisions of my country's patent law, patents include three types of patents: invention, utility model and design. Since the authorization of utility model and design patents does not undergo substantive examination, the "stability" of their patent rights is relatively weak compared with invention patents. Therefore, the transferee should fully understand the type of patent rights being transferred, weigh the potential risks of the transfer, and when necessary, require the patentee to provide a search report issued by the State Intellectual Property Office.
At the same time, the transferee should also search the legal status of the patent rights to be transferred to confirm whether the patent to be transferred is a valid patent and confirm the remaining validity period of the patent rights.
Pay attention to the identity of the patentee and the assignee
For the assignee, you should pay attention to whether the assignor of the patent right is the legal holder of the patent and whether the patent Whether there are other holders of the patent rights, whether the patent is a service invention, whether the assignor of the patent right is a state-owned enterprise, etc. If it is a state-owned enterprise, it needs to complete the procedures for the transfer of state-owned assets in accordance with the provisions on the transfer of state-owned assets in my country's Enterprise State-owned Assets Law.
Certain technologies covered by patent rights may be of great significance to national interests. Transferring such technologies to foreigners may have an adverse impact on our country’s national interests. Therefore, according to our country’s patent The law stipulates that when Chinese entities or individuals transfer patent rights to foreigners, foreign enterprises or other foreign organizations, they must go through the procedures in accordance with my country's relevant laws and administrative regulations. The “laws and administrative regulations” referred to in my country’s patent law mainly refer to the Foreign Trade Law and the Technology Import and Export Management Regulations.
A formal written transfer contract should be signed
Patent rights are actually a kind of property right, but inventions and creations that are the object of patent rights are intangible and cannot be transferred like tangible property. Actual possession, therefore the ownership of patent rights is based on the registration book of the State Intellectual Property Office. Therefore, my country’s Patent Law stipulates that parties transferring patent rights should enter into a written transfer contract and register it with the State Intellectual Property Office in a timely manner. At the same time, it should be noted that the transfer of patent rights takes effect from the date of registration.
Clarify the treatment method after the patent is invalidated
Article 47 of my country’s Patent Law stipulates that the patent right that has been declared invalid does not exist from the beginning, and the transfer of the patent right that has been performed The contract does not have retroactive effect and the patent transfer fee will not be refunded. However, if it clearly violates the principle of fairness, it shall be refunded in whole or in part.
From the perspective of the transferee, the transferred patent rights are not necessarily “absolutely” valid. It can be said that once the patent right is declared invalid, the transferred patent right will lose its meaning. According to the above provisions of my country's patent law, the original patentee is not obliged to return the patent transfer fee. In the absence of other agreements, the patentee shall The assignee bears the liability after the patent right is declared invalid. Therefore, before signing a patent transfer contract, the transferee should fully consider factors such as the "stability" of the patent to be transferred, the patent transfer fee and the economic benefit prospects of patent implementation, and negotiate with the patentee in the transfer contract according to the specific circumstances. Agree on different handling methods after a patent is declared invalid.
Understand the implementation history of the patent to be transferred
The patent to be transferred may have signed a license implementation contract with others. If the prior licensing contract has not been registered or filed with the State Intellectual Property Office, the transferee has the right to require the licensee of the patent to stop implementation; if the licensing contract has been registered or filed with the State Intellectual Property Office and made public , the licensee of the patent can enjoy the right to implement the patent, and the assignee has no right to stop the licensee's implementation.
Therefore, before signing a patent transfer contract, the transferee should carefully understand whether the patentee has signed a license implementation contract with others for the patent; at the same time, the transferee should also understand whether the patentee has implemented the patent to be transferred on his own. Patent, and specify in the patent transfer contract the implementation status of the patent before transfer as well as the legal responsibilities and solutions that may have consequences.
Agreement on infringement of the legal rights of others
The implementation of a patent has the potential to infringe the legal rights of others. For example, the implementation of a design patent may infringe the copyright, portrait rights, etc. of others. Invention and utility model patents may be an improvement on a basic patent proposed by others. If the implementation of the improved invention patent does not obtain the basic The license of the patentee of a patent may infringe its patent rights. Therefore, in the patent transfer contract, especially for the assignee, the method of bearing infringement liability when the above situation occurs should be stipulated.
It is worth noting that in addition to the above issues, the assignee should also pay attention to the difference between patent right transfer and implementation license. Patent right transfer refers to transferring the patent right to another person, and the transferee becomes the new patentee. Patent implementation license means that the patentee allows others to implement the invention protected by the patent under agreed conditions. The ownership of the patent right constant. Therefore, both parties should pay attention to the difference between patent rights transfer and implementation licensing, and choose the more beneficial method according to the actual situation.
Patent transfer contract
(Trial)
Patent name
Patent number
Transferor name< /p>
Address
Representative
Name of transferee
Address
Representative
Contract registration number
Place of signing
Date of signing
Produced by the State Intellectual Property Office of the People’s Republic of China
Foreword (in view of the terms)
Article 1 The transferor shall deliver information to the transferee
Article 2 Time, place and method of delivering information
Third Article 5 Patent implementation and licensing conditions and disposal methods
Article 4 Transfer fees and payment methods
Article 5 Treatment of patent rights being revoked and declared invalid
Article 6 Transition Period Clauses
Article 7 Taxes
Article 8 Breach of Contract and Claims
Article 9 Dispute Resolution
p>Article 10 Others
Article 11 Effectiveness of the Contract
Transferor’s signature and transferee’s signature
Transfer legal representative Signature and signature of the legal representative of the transferee
Year, month, day, year, month, day
Transfer
Transferor
Name of the party (or name) ) (signature and seal)
Legal representative (signature and seal) Authorized agent (signature and seal)
Contact person (signature and seal)
Residence
(Correspondence address)
Phone number
Bank of account
Account postal code
Accepted
Let
Name (or full name) of the party (signature and seal)
Legal representative (signature and seal) Authorized agent (signature and seal)
<p>Contact person (signature)
Residence
(Correspondence address)
Telephone number
Bank of account
Account postal code
中
Introducing
Name of the party (official seal)
Year, month and day
< p>Legal representative (signature and seal) Authorized agent (signature and seal)Contact person (signature and seal)
Residence
(Correspondence address)
Call by phone
Bank of account
Account postal code
Patent transfer contract
Signing guide
Made by the State Intellectual Property Office of the People's Republic of China
Patent Rights Transfer Contract
Guidelines for Signing
Foreword (in view of the terms)
--Given that the transferor (name or name note: must be consistent with the legal document of the patent being transferred) owns (patent name note: must be consistent with the patent legal document) patent, its patent number (nine digits) Publication number (eight digits including the last letter), announcement number (eight digits including the last letter), application date, authorization date, publication date, the validity period of the patent right is.
--In view of the transferee's (name or title) knowledge of the above patent, it is hoped to obtain the patent rights.
--Given that the transferor agrees to transfer its patent rights to the transferee.
Both parties agree to sign this contract
Article 1: The transferor shall deliver materials to the transferee
1. All patent application documents submitted to the China Patent Office ( Attachment 1), including description, claims, drawings, abstract and abstract drawings, request, statement of opinions, approval decision on change of bibliographic matters, restoration of rights after loss of rights, power of attorney, etc. (if the application is PCT, including all PCT application documents).
2. All documents issued by the China Patent Office to the transferor (Annex 2), including acceptance notice, intermediate documents, authorization decision, patent certificate and copies, etc.
3. A license contract for patent implementation that the transferor has permitted others to implement, including attachments to the contract (i.e., technology, process and other documents related to the implementation of the patent).
4. Document proving the validity of the patent right issued by the China Patent Office. Refers to the latest patent annual fee payment receipt (or the patent register of the Patent Office), in the request for revocation or invalidation of the patent right, the decision made by the China Patent Office or the Patent Reexamination Board or the People's Court to maintain the validity of the patent right, etc.
5. Transfer approval document from the superior authority or the relevant department of the State Council.
Article 2 Time, place and method of delivery of materials
1. Time of delivery of materials
After the contract takes effect, the transferor receives payment from the transferee Within days after the transfer fee is paid to the transferor, the transferor shall deliver to the transferee all the materials mentioned in Article 1 of the contract, or after the contract becomes effective,
Within days, the transferor shall deliver to the transferee all the materials mentioned in Article 1 of the contract. All (or part) of the information, if it is partial information, the transferor will deliver the remaining information to the transferee within a few days after the transferee delivers the transfer fee to the transferor.
2. Method and place of delivery of information
The transferor shall submit all the above information to the transferee in person, by registered mail or by air, and shall submit the list of information in person. Submit it to the transferee by hand, mail or fax, and submit the air waybill to the transferee by handing it in person or by mail.
The delivery location of all materials shall be the location of the transferee or the location agreed upon by both parties.
Article 3 Patent Implementation and Implementation License Situation and Disposal Methods
Before the signing of this contract, the transferor has already implemented the patent, this contract may stipulate that it will take effect after the signing of this contract After that, the transferor can continue to implement or stop implementing the patent. If there is no agreement in the contract, the transferor shall stop implementing the patent.
Before the signing of this contract, the transferor has allowed others to implement the license contract, and its rights and obligations will be transferred to the transferee from the effective date of signing of this contract.
Article 4 Transfer Fee and Payment Method
1. The transfer fee for the patent rights involved in this contract is (?, $ yuan), which shall be paid in one lump sum and will be paid when the contract takes effect. Within days from the date of announcement, or within days after the announcement by the Patent Office, the transferee shall remit the entire transfer fee to the transferor's account, or remit it in cash or (hand it over in person) to the transferor.
2. The transfer fee for the patent rights involved in this contract is (?, $ yuan), which shall be paid in installments, within days from the effective date of the contract, or after the patent office announces it
Within days, the transferee will remit % (?, $ yuan) of the transfer fee to the transferor's account; within days after the transferor delivers all the information, the transferee will remit the remaining transfer fee to (or pay in person) Party;
Or after the adoption contract takes effect, (?, $) yuan will be paid within a day,
(?, $) yuan will be paid within a month, and (?, $) yuan will be paid within a month. ) Yuan, and finally pay off the rest of the transfer fee within one month.
The payment method is bank transfer (or collection, cash payment, etc.), and the cash payment location is generally the place where the contract is signed.
Article 5: What to do if the patent right is revoked or declared invalid
According to Article 50 of the Patent Law, after the establishment of this contract, the transferor’s patent right is revoked or invalidated. When declared invalid, if there is no obvious violation of the principle of fairness and the transferor has no bad faith to cause losses to the transferee, the transferor will not return the transfer fee to the transferee, and the transferee will not return all the information.
If the signing of this contract obviously violates the principle of fairness, or the transferor intentionally causes losses to the transferee, the transferor shall return the transfer fee.
When another person files a request to the Patent Office to revoke the patent right, or requests the Patent Reexamination Board to declare the patent right invalid, or is dissatisfied with the decision of the Reexamination Board (for invention patents) and files a lawsuit in the People's Court, upon the establishment of this contract Afterwards, the transferee shall be responsible for the defense and bear the resulting request or litigation costs.
Article 6 Transition Period Clause
1. After this contract is signed and takes effect until the date of registration and announcement by the Patent Office, the transferor shall maintain the validity of the patent. During this period , the annual fee and renewal fee (for utility models and designs applied before December 31, 1992) shall be paid by the transferor.
2. After this contract is registered and announced in the Patent Office, the transferee is responsible for maintaining the validity of the patent, such as handling patent annual fees, renewal fees, administrative revocation and invalidation requests, and invalidation litigation. Responding to litigation and other matters.
(It can also be agreed that after this contract is signed and becomes effective, all costs for maintaining the validity of the patent right shall be paid by the transferee.)
3. During the transition period, due to force majeure , causing the transferor or transferee to be unable to perform the contract, this contract will be terminated.
Article 7 Taxes
1. If both the transferor and the transferee are Chinese citizens or legal persons, the taxes required to be paid on the transfer fees involved in this contract shall be in accordance with the Chinese According to the People's Republic of China and the National Tax Law, the transferor shall pay taxes.
2. If the transferor is an overseas resident or unit, the transferor shall pay Chinese taxes in accordance with the National Tax Law of the People's Republic of China and the "Income Tax Law of the People's Republic of China and Foreign-Invested Enterprises and Foreign Enterprises" Agencies pay taxes.
3. If the transferor is a Chinese citizen or legal person, and the transferee is an overseas unit or individual, tax will be paid according to the tax laws of the other country or region.
Article 8 Breach of Contract and Claims
To the transferor:
1. The transferor refuses to deliver all the information stipulated in the contract and goes through the patent transfer procedures , the transferee has the right to terminate the contract and require the transferor to return the transfer fee and pay liquidated damages.
2. If the transferor fails to deliver materials to the transferee for patent rights transfer procedures (including making changes to the records to the Patent Office without justifiable reasons) within the time limit, liquidated damages will be paid for each week overdue, and for two months overdue, The transferee has the right to terminate the contract and require the return of the transfer fee.
3. According to Article 6, the transferor shall pay liquidated damages to the transferee:
1. If the transferee refuses to pay the transfer fee, the transferor has the right to terminate the contract and require the return of all information, and demand compensation for its losses or liquidated damages.
2. The transferee. If the transfer fee is overdue, liquidated damages will be paid for each overdue period
; if the transfer fee is overdue for two months, the transferor has the right to terminate the contract and require payment of liquidated damages.
3. In the event of breach of contract under Article 6, the transferee shall pay liquidated damages
Article 9 Dispute Resolution
1. If a dispute arises between the two parties during the performance of the contract, the terms of this contract shall apply. , and resolve the dispute on their own through friendly negotiation.
2. If the two parties cannot resolve the dispute through negotiation, they shall submit it to the patent management authority where the transferee is located or where the contract was signed for mediation. If they are not satisfied with the mediation result, they may file a lawsuit in the People's Court.
p>3. If the two parties have a dispute and cannot be reconciled, they shall file a lawsuit in the People's Court.
4. If the two parties have a dispute and cannot be reconciled, they shall request arbitration by an arbitration committee.
Note: You can only choose one of 2, 3, and 4.
Others in Article 10
Contents not covered by the first nine items but that require special agreement include unforeseen technical problems. How to agree; how to agree when unforeseen legal issues arise, etc.
Article 11 Effectiveness of the Contract
This contract will be binding on both parties after it is signed by the Patent Office. The contract becomes legally binding from the date the "Changes in Bibliographic Matters" made by both parties are registered and announced.
The above content is a sample text, please modify it according to the actual situation!