Measures of Shanghai Municipality on the Administration of Patent Licensing Contracts

Chapter I General Provisions Article 1 In order to safeguard the legitimate rights and interests of the parties to the patent licensing contract, maintain the normal patent implementation order, promote the transformation of patent technology into productive forces, speed up the development of science and technology, and meet the needs of socialist modernization, these Measures are formulated in accordance with the relevant laws and regulations of the state and combined with the actual situation of this Municipality. Article 2 A patent licensing contract shall be signed for the exploitation of another person's patent. A patent licensing contract is a written agreement between the patentee (hereinafter referred to as the licensor) and the licensee to exploit their patents. Article 3 The conclusion of a patent licensing contract must abide by the laws and policies of the state. Anyone who harms the interests of the state and society, infringes on the legitimate rights and interests of the other party or causes losses to the other party through fraud shall be investigated for economic and legal responsibilities. Article 4 The conclusion of a patent licensing contract shall follow the principles of voluntariness, fairness, compensation for equal value and good faith. Article 5 Where the invention-creation submitted by others to the China Patent Office (including the patent application published or announced by the China Patent Office) has not been patented, an exploitation license contract (hereinafter referred to as the patent technology exploitation license contract) shall also be concluded. This kind of license contract also belongs to the scope of management of these measures. Article 6 Shanghai Patent Administration Bureau is the competent authority for patent work in this Municipality, and has the functions of management and law enforcement. Chapter II Formation of Contract Article 7 A patent license contract is established when both parties reach an agreement on the terms of the contract according to law. Article 8 A patent licensing contract shall generally have the following clauses:

(1) Subject matter (referring to patented products, patented methods and related proprietary technologies, etc.). );

(two) technical performance, quality indicators and economic benefits;

(3) Time limit, progress and mode of performance;

(4) acceptance criteria and methods;

(five) the use fee and its payment method;

(6) Ways and conditions for providing technology and technical feedback;

(7) confidentiality requirements;

(eight) the remuneration and payment methods of intermediaries and the responsibilities that intermediaries should bear;

(9) Liability for breach of contract;

(10) Measures to be taken after the patent is declared invalid;

(eleven) disputes and dispute resolution methods;

(12) Contracts with general, exclusive, exclusive, cross-selling or assignable licenses;

(thirteen) the interpretation of key nouns and terms;

(14) Other matters agreed by both parties. Article 9 The terms of a patent technology licensing contract may be concluded with reference to the provisions of Article 8 of these Measures, and include the following terms:

(1) Technical secrets before the patent application is made public and announced in the Chinese Patent Office;

(two) whether to change the terms of the contract after the patent application is approved, or whether to sign a patent licensing contract;

(three) the way to deal with the contract when the patent application is rejected. Article 10 The licensor of a patent licensing contract shall not force the licensee to accept the following restrictive clauses:

(1) Requiring the licensee to accept incidental conditions unrelated to the exploitation of the patent, such as unnecessary hard matching of technology, equipment, spare parts or raw materials;

(2) restricting the licensee from developing and improving the licensed patented technology;

(3) The conditions for the two sides to exchange improved technologies are not equal;

(4) restricting the channels, quantity and price of the patented products sold by the licensee;

(five) require the licensee to continue to pay the royalties after the patent expires. Chapter III Performance of the Contract and Liability for Breach of Contract Article 11 After the contract is signed, both parties must strictly abide by it and fully perform it, and neither party may change or terminate it without authorization. If it is necessary to change or cancel, it should be agreed by both parties on the premise of not violating national policies and laws; If the contract is changed, the supplementary agreement shall be handled in the order of signing the contract. Article 12 If a party breaches a contract, it shall bear the liability for breach of contract. Article 13 Licensor's liability for breach of contract:

(1) Licensor fails to deliver necessary technical data and impart necessary know-how to Licensee in accordance with the contract;

(2) Due to the reasons of Licensor, the technical and economic indicators can not meet the acceptance standards stipulated in the contract;

(3) If the licensing contract is exclusive or exclusive, the licensor shall conclude a contract with a third party within the validity period and area specified in the contract; Or an exclusive license contract has been concluded, the licensor shall exploit the patent by itself within the validity period and area stipulated in the contract;

(4) Other liabilities for breach of contract.

Licensee's liability for breach of contract:

(a) without the consent of the licensor, unauthorized consent to the third party to use the technology stipulated in the contract;

(2) disclosing the undisclosed technical contents provided by Licensor to others in violation of the provisions of the contract;

(3) Failing to pay the use fee as stipulated in the contract;

(4) Other liabilities for breach of contract. Article 14 If one party breaches the contract, it shall pay liquidated damages to the other party. If the losses caused to the other party by breach of contract exceed the liquidated damages, it shall also compensate for the insufficient liquidated damages. If the other party requests to continue to perform the contract, it shall continue to perform it. Chapter iv royalties and payment methods article 15 the payment of royalties shall be determined by both parties through consultation according to the development cost, technical difficulty, contract type and expected economic benefits after implementation, and the principle of profit sharing.