Features of the agreement on the alienation of rights to know-how

K know-how or trade secrets refers to any production or scientific information, unique technology, program or recipe, the use of which in a company allows you to make money by selling goods or providing services. A production secret, as a rule, is set out in documents and is subject to protection as a trade secret from leakage and disclosure (according to Article 1465 of the Civil Code of the Russian Federation)

Despite the fact that the production secret is the intellectual property of the company, it does not require registration with Rospatent. However, as an object of intellectual property, know-how can be actively used in business, licensed to other interested parties for use in their business, or sold under an alienation agreement.

But if a production secret is used by another person without the consent of its copyright holder, the latter may, through the court, demand compensation for the damage caused.

The exclusive right to a production secret is transferred under a license agreement and an alienation (purchase and sale) agreement.

The latter is an agreement that allows the copyright holder to transfer the exclusive right to a production secret in full to another person interested in it.

To the main

the peculiarities of concluding an agreement for the alienation of exclusive rights to know-how include

that:

- the acquirer receives exclusive rights in full and can dispose of the production secret as an object of intellectual property at its own discretion;

- an agreement can only be concluded with legal entities and only on a reimbursable basis, unless otherwise provided in the agreement;

- the copyright holder cannot enter into an agreement with third parties on the alienation and transfer of exclusive rights to a secret if information about it has become publicly known;

- the amount of remuneration and the procedure for its payment must be set out in detail in the contract;

- the former copyright holder is obliged to ensure the confidentiality of information constituting a trade secret;

- for the disclosure of a production secret, the contract must provide for punishment for the violator;

- if the terms of the contract are violated by one of the parties, the contract may be terminated, and the violator may be subject to sanctions.

Based on the above, concluding an agreement and transferring the exclusive right to a production secret (know-how) to interested parties requires careful and professional consideration from the standpoint of ensuring the confidentiality of information constituting this secret, and therefore requires the involvement of highly qualified specialists.