The main difference between an alienation agreement and a license agreement

The main difference between an alienation agreement and a license agreement
When concluding a license agreement and alienation agreement, the rights to intellectual property (trademarks, patents for inventions, utility models, industrial designs, computer programs, etc.) are transferred to other persons

Based on license agreement lies in the transfer of rights to an object of intellectual property (IP) from the licensor (IP rights holder) to the licensee (acquirer of the right) on the basis of a license. At the same time, under the agreement, the licensee receives the opportunity to use the IP object under certain conditions.

In accordance with Article 1236 of the Civil Code of the Russian Federation, there are two types of licensing agreements - with the provision of a simple (non-exclusive) license or an exclusive license to the licensee.

A simple license gives the licensee the right to use the IP subject to the terms specified in the contract, and the licensor has the right to continue to license other interested parties and receive profits from several sources.

The issuance of an exclusive license presupposes that the licensee obtains exclusive rights to use the IP object, and in this case the licensor does not have the right to issue it to other persons, which is beneficial for the licensee, since he has no competitors even in the person of the licensor.

There is also a sublicense agreement. It may be concluded between the licensee and other persons if the licensor has given written consent to the licensee for its conclusion. In this case, the rights from the licensee can also be transferred to an extent not exceeding the terms of the main agreement with the licensor.

Alienation agreement is similar to a purchase and sale agreement, and exclusive rights to IP objects are transferred in full for the entire period of their validity. The copyright holder and the acquirer enter into a written agreement, as do the licensor and the licensee.

There is a difference for copyright objects between the alienation of a work on a tangible medium and the transfer of exclusive rights. Thus, the acquirer of a work of authorship receives rights only to a thing that he can use for himself personally, but not for commercial activities or further distribution, for example, on the Internet. In this case, it is necessary to conclude an agreement for the alienation of exclusive rights.

Thus, a license agreement differs from an alienation agreement in the nature of the transfer of powers - thus, when concluding a license agreement, the exclusive right to IP objects is retained by their previous copyright holder, and when concluding an alienation agreement, its acquirer becomes the owner of the IP. That is, the licensor transfers part of his rights to the licensee, and under the agreement for the alienation of rights he is deprived of them completely.

In conclusion, I would like to note that the license agreement and alienation agreement are also registered with Rospatent, but only if the IP objects are already registered there. That is, state registration of the transfer of rights is required, for example, for trademarks, patents for inventions, utility models or industrial designs, computer programs, if they were previously registered with Rospatent. In this case, the alienation agreement is also registered. And contracts for copyright works are not subject to registration, since copyright works (artistic, literary, cinematographic works that can be registered on the basis of Article 1242 of the Civil Code of the Russian Federation in non-state copyright societies), know-how or production secrets (in accordance with Chapter 75 of the Civil Code of the Russian Federation are protected in a special regime), as well as breeding developments are not subject to registration.

It should be noted that the transfer of rights to an IP object is carried out at the time of registration of the agreement with Rospatent, where it is necessary to send a package of documents consisting of an application for registration of the transfer of exclusive rights with signatures from both parties, a power of attorney addressed to the representative if the application is submitted by another person, consent to the processing of personal data for all participants in the transaction and a copy of the payment document confirming payment of the state fee for registration of the agreement in the state register.