A license agreement differs from an alienation agreement in that, on the basis of it, the right to an object of intellectual property (IP) is transferred from the licensor (IP rights holder) to the licensee (acquirer of the right) under certain conditions, and when concluding an alienation agreement, rights are transferred in full for the entire period of their validity and it is similar to a purchase and sale agreement

When transferring rights to copyright objects, there are differences 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, an agreement on the alienation of exclusive rights is concluded.

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 the licensor, and when concluding an alienation agreement, the acquirer becomes the copyright holder of IP objects, and the previous copyright holder is completely deprived of rights.

There are certain conditions that must be strictly observed in order to conclude a license agreement and an alienation agreement (Table 1).

№ Conditions for concluding a license agreement Conditions for concluding an alienation agreement
1 Subject of the agreement - it is necessary to indicate the name of the intellectual property (IP) indicating the registration number, a list of technical documentation and other documents The subject of the agreement is to indicate the type of IP indicating the number of the law enforcement document, and in the case of a work of art or a scientific article, indicate its title, the name of the author, the type of work, the form of execution (article, report, story, novel). When drawing up an alienation agreement for a computer program, it is mandatory to indicate its main functional characteristics and technical capabilities
2 Indicate the scope of application of the IP object (for example, the use of a trademark on product packaging). In the absence of instructions in the contract, the licensee must not use IP objects for personal interests. Otherwise, it will be qualified by the court as a violation of exclusive rights
3 Determine the cost of the license and indicate the procedure for paying remuneration. For individuals, the gratuitous transfer of rights is allowed, which is stipulated in the contract, while between commercial organizations the gratuitous transfer of rights is prohibited Specify the amount and procedure for payment of remuneration. Free purchase and sale between commercial organizations is not allowed
4 Determine the terms of the territorial validity of the agreement, which may be limited to a certain subject of the Russian Federation or its region; if there are no indications in the agreement, then the right is granted throughout the entire territory of Russia
5 Specify the validity period of the license, otherwise the agreement will be valid only for 5 years from the date of conclusion. You can also stipulate additional conditions such as quality control, implementation methods, etc.

It should be remembered that the following types of IP rights are not subject to transfer of rights to IP under a license and alienation agreement:

- brand names, the legal protection of which ceases with the closure of the legal entity (trade names and commercial designations can be registered as a trademark and thereby protected);

- regional brands (geographical indications and names of goods, the registration of which is carried out in order to protect products that have unique properties associated with a particular area or its natural conditions;

- commercial designations (they can only be transferred as part of an enterprise under a lease agreement or a commercial concession agreement (franchise).

The transfer of rights can be carried out without a contract in the order of inheritance, during the reorganization of a legal entity and during recovery of IP. At the same time, all changes associated with a change of owner, his address and other data must be recorded in Rospatent for all types of IP that have undergone state registration.

In conclusion, I would like to note that license agreement and alienation agreement can be registered with Rospatent only in relation to those IP objects that are already registered there (trademarks, patents for inventions, utility models or industrial designs, computer programs). Agreements on copyrighted works, know-how, trade secrets or breeding developments are not subject to registration.