The company may require the technology funder to provide: patent ownership certificate, patent specification, patent claim, latest annual fee payment certificate and other documents.
1. Source of patent right: application for acquisition, acquisition by transferee.
(1) Patents are regional, generally valid only within the geographical scope of a specific country or region, and have no extraterritorial effect.
Yi Tian reminded: If the products manufactured by this patented technology are intended to be sold abroad, it is suggested that enterprises should check whether the patent right is valid at the place where the products are intended to be sold before accepting the patent shares.
(2) The transferee shall sign a written contract and register it with the patent administration department of the State Council, which 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.
Tip: It is not enough to review the written contract only when the registration takes effect. It is necessary to check the patent ownership status and patent announcement in combination with relevant websites.
2. Are there any potential ownership disputes, job behaviors, entrustment or cooperation with others?
(1) service invention
(2) Entrusting inventions
If there is an agreement, it shall be followed, and if there is no agreement, it shall be owned by the trustee. The client can implement it free of charge and give priority to the transferee.
(3) Cooperative invention
Tip: according to the above standards, check the qualification of investors, that is, whether they are patentees.
The types of investment are divided into patent ownership investment, use right investment and application right investment. In the case of the contribution of the right to use the patent, the patentee shall arrange the contribution of the right to use the patent in the form of exclusive license, taking into account factors such as horizontal competition, non-competition restriction and non-competition. Where a cooperative invention is involved, the consent of all * * * people shall be obtained.
Second, the patent legal status review
1. Is it under legal protection?
After the statutory protection period, intellectual achievements enter the public domain and can be freely used by the public.
Invention patent: 20 years/utility model and design: 10 years.
From the date of application (receipt date/mailing date), if there is priority, from the priority date.
Tip: The shorter the remaining validity period of patent right, the lower the commercial value.
2. Is there a patent authorization?
Tip:
-If there is an exclusive license or an exclusive license that has been filed, it can be used against third parties. Even if the third party has paid, it can't use the patent, and the patentee can only be held liable for breach of contract. In this case, it is not recommended for enterprises to sign a technology shareholding agreement.
-If there is a general license, when evaluating the patent value, we must consider whether it will affect our own commercial interests.
3. Is there a patent ownership or infringement dispute? Is it preserved? Is it declared invalid?
In addition to inquiring about relevant litigation information, we can also find out the defects of novelty, creativity and practicality of the target patent by entrusting China National Intellectual Property Administration to issue a search report, literature search analysis, and inquiring about the examination files of patents of the same subject outside the territory, and analyze and judge the possibility that the patent is declared invalid.
4. Do you pay the annual fee on time? If the annual fee is not paid on time, is it in the late payment period, notice period or recovery period?
The patentee shall pay the annual fee from the year when the patent right is granted. If the annual fee is not paid as agreed, the patent right shall be terminated before the expiration of the time limit.
5. Is the patent right 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.