Instructions: how to draw up and conclude a sublicense agreement

As a general rule, a license agreement is a single written document, the subject of which is the right to use an object of intellectual activity, signed by the parties - the licensee and licensor. An oral form of agreement is possible only for such rights as the use of a work in a printed periodical.

Attention: our lawyer for the protection of intellectual property in Yekaterinburg will help you draw up a license agreement: professionally, on favorable terms and in a short time. Call now!

How to draw up a license agreement correctly?

Mandatory conditions for agreement in the license agreement are:

1. Subject of the license agreement . In order to determine the subject of the contract, it is necessary to describe in detail the object to which the rights under the contract will apply. It is necessary to indicate the full name and characteristic individual characteristics, as well as information about the document certifying the registered rights (patent or certificate). If the description of the object is too long, then you can draw it up as an annex to the contract.

It is imperative to check the correct spelling of the wording of registered objects in accordance with the state register data. Otherwise, Rospatent will not register the agreement.

It is possible to draw up a license agreement that provides for the use of an object that will arise in the future. Then it is necessary to individualize the subject of the contract so that its object can be determined when the right to use it is presented.

1. Types of use of the object . The law specifies standard methods of using an object, which can be taken as a basis in relation to the required object: for works (clause 2 of Article 1270, 1261 of the Civil Code), for inventions, models (clause 2 of Article 1358 of the Civil Code), for commodity signs (clause 2 of Article 1484 of the Civil Code). Failure to indicate any use will not be deemed to have been provided.
2. the amount and terms of remuneration of the licensor;
3. other conditions, if at the request of any party they should be specified.

If an agreement is drawn up regarding a trademark, it is necessary to indicate in relation to which specific goods the licensee can use it.

If agreement on essential terms has not occurred, then the contract is considered not concluded.

1. Additionally, it is recommended to include conditions such as:
2. Type of license: simple or exclusive. When choosing a simple license, the licensor reserves the right to issue licenses to other persons. If it is exclusive, it does not have such a right. If you do not specify any method in the contract, then it will be considered simple by default;
3. License term;
4. Other conditions: limits of the licensee’s rights, provision of technical support by the licensor, reporting procedure, liability, termination of the contract, etc.

USEFUL : if the contract is drawn up by the second party, we recommend conducting a legal analysis of the contract with the help of a lawyer, watch the VIDEO on the topic

License agreement No. 1539/21 for the right to use the computer program “Otchet.ru”

Agreement 3 MB Agreement archive

Ekaterinburg

"1" August 2021

The license agreement is an offer from JSC PF SKB Kontur (TIN 6663003127 KPP 997750001, Ekaterinburg, Narodnaya Volya St., 19a), hereinafter referred to as the Licensor, to the User (legal entity or individual entrepreneur), hereinafter referred to as the Licensee or Personal Data Operator. The license agreement is recognized as concluded from the moment of its acceptance by the Licensee. For the purposes of the License Agreement, acceptance means payment of remuneration under the License Agreement or the Licensee’s beginning to use the Otchet.ru computer program, depending on which event occurs first.

Terms and Definitions

1.1. Report.ru is the result of intellectual activity - a computer program “Otchet.ru” (hereinafter referred to as Report.ru), intended for sending reports to the tax authorities, Pension Fund of Russia, Rosstat and the Federal Social Insurance Fund.

1.2. A qualified certificate (hereinafter referred to as the Certificate) is a document issued by a certification center accredited in accordance with the Federal Law of the Russian Federation “On Electronic Signatures” and confirming that the electronic signature verification key belongs to the owner of the electronic signature verification key certificate.

1.3. Personal data subject is an individual whose personal data the Licensee processes using Report.ru.

1.4. Request - requirements of the personal data subject regarding the processing of personal data.

1.5. The price list is an integral part of the License Agreement, establishing the composition and cost of tariff plans. The current edition is published at https://otchet.ru/price.

1.6. CIPF is a means of cryptographic information protection (electronic signature tool) CIPF "CryptoPro CSP", additional software for the Licensee to independently implement the functions of encrypting and signing electronic documents with an electronic signature, certified in the manner prescribed by law.

1.6.1. Documentation – printed materials and media containing documents in electronic form. Documentation is an integral part of CIPF. 1.6.2. License form - a document indicating the serial number (license key), granting the right to use CIPF at one workplace, indicating the validity period of the license. 1.6.3. A license as part of a key certificate is software algorithms built into the Certificate that allow you to activate CIPF installed on your workstation (or server). Does not come with a license form.

1.7. Rules for ensuring information security in the workplace - a document drawn up by the Licensor on the basis of the provisions of the current legislation of the Russian Federation in the field of application and use of electronic signatures, mandatory for review by all owners of the Licensee’s keys. The current version of the rules is published on the website https://ca.skbkontur.ru.

Subject of the License Agreement

2.1. The subject of the License Agreement is the transfer by the Licensor to the Licensee of non-exclusive rights to use the result of intellectual activity - the computer program - "Otchet.ru" under the terms of a simple (non-exclusive) license to the extent provided for in the License Agreement, by opening access to the Licensor's server.

2.2. If the Licensee requires CIPF, then the Licensor undertakes to transfer simple (non-exclusive) licenses for the right to use CIPF, and the Licensee undertakes to accept and pay for the transferred non-exclusive property rights.

2.3. If necessary, the Licensor may be provided with other services provided for in the Licensor’s price list for a fee.

2.4. The conclusion of the License Agreement is considered by the Parties as an order from the Personal Data Processing Operator to another person, provided for in Part 3 of Article 6 of the Federal Law of July 27, 2006 No. 152-FZ “On Personal Data”. At the same time, the Licensee instructs the Licensor to carry out the following actions (operations) with personal data, performed using automation tools or without the use of such means: collection through the Licensee filling out Report.ru web forms, recording, systematization, accumulation, storage on the Licensor’s server, clarification ( update, change) after changes are made by the Licensee, extraction, use, transfer (provision, access) via telecommunication channels to regulatory authorities for reporting, depersonalization, blocking, deletion, destruction of personal data - solely for the purpose of fulfilling the obligations stipulated by the License Agreement. The content and list of processed personal data is determined based on the requirements of the current legislation of the Russian Federation in the field of activities automated with the help of Report.ru.

Exclusive rights

3.1. Report.ru is the result of the intellectual activity of the Licensor and is protected by the copyright legislation of the Russian Federation.

3.2. Report.ru does not use any elements in violation of the rights of third parties.

3.3. The right to use Report.ru is granted only to the Licensee (and no other third parties) solely to the extent specified in the License Agreement.

3.4. The certificate of state registration of rights to Otchet.ru is officially published on the Licensor’s website https://kontur.ru/about/licences.

3.5. Report.ru was included in the unified register of Russian programs for electronic computers and databases on December 31, 2020, registration number 8605.

3.6. Exclusive rights to the CIPF “CryptoPro CSP” belong to the copyright holder LLC “Crypto-Pro” (TIN 7717107991), the transfer of rights to the Licensee is carried out on the basis of a license agreement concluded by the copyright holder with the Licensor.

3.7. The cryptographic information protection tool "CryptoPro CSP" (version 4.0) was included in the unified register of Russian programs for electronic computers and databases on April 29, 2016, registration number 515. The cryptographic information protection tool "CryptoPro CSP" (version 5.0) was included in the unified register of Russian programs for electronic computers and databases 03/29/2018, registration number 4332. The license included in the key certificate allows the Licensee to activate CIPF version 4.0 or version 5.0 installed at the Licensee’s workplace.

Procedure for granting access

4.1. Access to Report.ru is considered provided by the Licensor after the Licensee makes payment in the manner prescribed by the License Agreement. The Licensee's implementation of access is carried out upon registration with Report.ru by entering the access code received from the Licensor in an SMS message. In the future, the Licensee in his personal account can additionally configure access to Report.ru using a login (the login corresponds to the email address) and password.

Terms of use (scope of rights granted).

Methods of use.

5.1. The licensee may use Report.ru in the following ways:

• access the server around the clock, except during maintenance periods, and reproduce the graphical part (working interface) on the screen of a personal computer;
• use the functionality of Report.ru.

5.2. The ability to use Report.ru to transmit reports signed with a qualified electronic signature is provided only to the Licensee. Signing reports to Report.ru is possible only with a qualified electronic signature, the verification certificate of which belongs to a person who has the right to act on behalf of a legal entity without a power of attorney, or to an individual entrepreneur.

5.3. The computer program Report.ru is transferred to the Licensee “as is” and the Licensor does not guarantee that the functionality will fully meet the expectations, needs and ideas of the Licensee.

5.4. Terms of use of CIPF:

5.4.1. The licensee has the right to use CIPF on one workstation (or server) in accordance with the volume and type of purchased Licenses, the purpose and rules of use set out in the operational documentation, in the following ways: store and install CIPF in computer memory, reproduce CIPF by writing it into memory COMPUTER. 5.4.2. The licensee undertakes not to distribute CIPF to third parties through sale, rental, rental, lending or other means of alienation. 5.4.3. The licensee has no right to carry out the following activities:

• allow the use of CIPF by persons who do not have the rights to such use;
• disassemble (analyze and examine object code), decompile (convert object code into source text), adapt and modify CIPF;
• make any changes to the object code of programs, except for those made by the means included in the CIPF kit and described in the documentation;
• perform other actions regarding CIPF that violate Russian and international standards on copyright and the use of software.

5.4.4. The copyright holder guarantees the functionality of the CIPF provided that it is operated on equipment that meets the technical requirements set out in the operational documentation and there is no unauthorized interference in the operation of the CIPF at a low level. 5.4.5. The warranty period for the operation of the cryptographic information protection system is established at 12 (twelve) months from the date of installation of the cryptographic information protection device at the workplace of the cryptographic information protection information user, provided that he has a license to use the cryptographic information protection information.

Rights and obligations of the parties

6.1. Responsibilities of the Licensor:

6.1.1. ensuring Otchet.ru fulfills the functions of sending reports; 6.1.2. timely updating of software on the server; 6.1.3. ensuring round-the-clock availability of the server, with the exception of the time of maintenance, which is carried out mainly at night; 6.1.4. ensuring the confidentiality of data posted by the Licensee to Report.ru for the entire period of its presence on the Licensor’s server; 6.1.5. performing the functions of an electronic document management operator provided for in Article 80 of the Tax Code of the Russian Federation;

6.2. Licensor Rights:

6.2.1. modification or release of a new version of Report.ru at any time and for any reason, including in order to meet the needs of the Licensee or competitiveness requirements, in order to comply with the current legislation of the Russian Federation. The Licensor reserves the right to add new properties and functionality to Report.ru or to remove existing properties and functionality from Report.ru; 6.2.2. blocking access to Report.ru if the Licensee violates the terms of the License Agreement.

6.3. Responsibilities of the Licensee:

6.3.1. independent connection to the Internet; 6.3.2. independent configuration of the workplace in accordance with the requirements published at https://otchet.kontur.ru/techinfo; 6.3.3. refusal to attempt to copy, modify, decompile, disassemble Report.ru; 6.3.4. refusal to attempt to access information of third parties stored in Report.ru; 6.3.5. The licensee does not have the right to provide Report.ru for rental, lease or temporary use to third parties for the purpose of making a profit, as well as to perform other actions regarding Report.ru that violate Russian and international standards on copyright and the use of software; 6.3.6. compliance with the Information Security Rules in the workplace; 6.3.7. providing the Licensor with all information and documents necessary for the Licensor to fulfill its obligations under the License Agreement; 6.3.8. compliance with information protection requirements in the workplace in accordance with Order of the FSB of Russia dated 02/09/2005 No. 66 “On approval of the Regulations on the development, production, implementation and operation of encryption (cryptographic) information security means” (PKZ-2005 Regulations) and Information Security Rules at work; 6.3.9. immediately contact the Licensor's technical support if the Licensee encounters technical problems that impede the normal use of Report.ru.

6.4. Licensee Rights:

6.4.1. obtaining round-the-clock access to the server, with the exception of the time of maintenance; 6.4.2. making proposals to change the functionality of Report.ru; 6.4.3. failure to provide the Licensor with reports on the use of Report.ru.

6.5. The Licensee undertakes to accept acceptance certificates and invoices under the License Agreement in the computer program “Diadoc” (hereinafter referred to as Diadoc), the copyright holder of which is the Licensor and the use of which for the purposes of the License Agreement will not be charged for the Licensee. If the Licensee does not have an account in Diadoc, the Licensor, before sending the acceptance certificate and invoice to the Licensee in Diadoc, undertakes to create an account for the Licensee in Diadoc. The Licensee's procedure for logging into Diadoc's account is published at https://www.diadoc.ru/support.

Obligations of the Parties in the field of processing of personal data

7.1. The licensee guarantees:

• that when processing personal data, he observed all the rights of personal data subjects provided for by the current legislation of the Russian Federation in the field of personal data protection;
• that he has received the consent of the subjects of personal data for the processing of personal data belonging to them using Report.ru, including for entrusting such processing to the Licensor as a third party;
• that when posting personal data, he complied with all the principles and conditions for the processing of personal data and restrictions provided for by the current legislation of the Russian Federation;
• that in the event of termination of the License Agreement, the Licensee will send a timely notification to the Licensor about the need to delete personal data posted by the Licensee to Report.ru.

7.2. In order to comply with the rights of the subject of personal data provided for by the Federal Law of July 27, 2006 No. 152-FZ “On Personal Data”, and the inability of the Licensor to independently carry out any actions regarding the processing of personal data, the Parties agreed to establish the following procedure for interaction when the Licensee receives a Request :

• When the Licensee (Personal Data Processing Operator) receives a Request containing the withdrawal of the personal data subject’s consent to the processing of personal data, then within seven working days from the date of its receipt the Licensee undertakes to notify the Licensor of the need to delete the revoked data or provide the personal data subject with a reasoned refusal to comply Request.
• At the request of the Licensor, the Licensee is obliged to provide evidence of compliance with the rights of the subject of personal data provided for by the current legislation of the Russian Federation, as well as documents confirming the proper fulfillment by the Licensee of other obligations provided for by the current legislation in the field of personal data processing.

7.3. The Licensor guarantees:

• that they have sent to the authorized body for the protection of the rights of personal data subjects a notification of their intention to process personal data in the manner prescribed by the current legislation of the Russian Federation;
• that it has taken the necessary organizational and technical measures to protect personal data from unauthorized or accidental access to it, destruction, modification, blocking, copying, distribution of personal data, as well as from other unlawful actions in relation to personal data, in particular: identification of threats to the security of personal data during their processing;
• establishing rules for access to processed personal data;
• detecting facts of unauthorized access to personal data and taking measures to suppress them;
• assessing the effectiveness of measures taken to ensure the security of personal data and monitoring the measures taken.

Territory of validity of the License Agreement

8.1. The license agreement is valid throughout the Russian Federation.

Validity period of the License Agreement. Amendments to the terms of the License Agreement

9.1. The License Agreement comes into force upon acceptance of the terms of the License Agreement and is valid for the period established by the tariff plan, and is automatically extended for a new term on the terms of the tariff plan chosen by the Licensee.

9.2. If the Licensee violates the terms of the License Agreement, the Licensor has the right to terminate the agreement early and immediately block access to the server without prior notice to the Licensee.

9.3. The date indicated in the preamble of the License Agreement is the date of publication of the License Agreement and is not the date of its conclusion with a specific Licensee.

9.4. The Licensor has the right to unilaterally make changes to the terms of the License Agreement by publishing it on the website https://otchet.kontur.ru.

9.5. The licensor has the right to unilaterally make changes and/or additions to the Rules for ensuring information security in the workplace by publishing on the website https://ca.skbkontur.ru.

9.6. The transfer of urgent licenses for CIPF is carried out for the period specified in the license form, the transfer of perpetual licenses for CIPF is carried out for the entire period of validity of the exclusive right of the copyright holder.

9.7. The transfer of the license for CIPF as part of the Certificate is carried out for the period specified in such Certificate. In case of early termination of the Certificate for any reason, the license will be terminated early.

9.8. After the expiration of the Certificate, provided that the electronic signature key (private key) is preserved, the license included in the Certificate allows decryption and verification of the electronic signature.

9.9. The Parties have the right to terminate the License Agreement unilaterally with mandatory notification to the opposite Party 30 (Thirty) calendar days before the date of intended termination of the License Agreement. The thirty-day period is calculated from the date of receipt by one of the Parties of the notice of termination of the License Agreement.

9.10. The Licensee's unilateral refusal of the License Agreement in accordance with clause 9.9 of the License Agreement does not entail blocking the Licensee's access to Report.ru, and also does not constitute a basis for the return of the license fee paid by the Licensee.

Reward

10.1. The cost of the right to use a computer program (license fee) is determined by the Licensor’s Price List and is established in the invoice. The cost of the right to use a computer program included in the unified register of Russian programs for electronic computers and databases is not subject to VAT on the basis of subparagraph 26 of paragraph 2 of Article 149 of the Tax Code of the Russian Federation, not included - includes VAT at the rate established by paragraph 3 Article 164 of the Tax Code of the Russian Federation.

10.2. The cost of the Licensor's services is determined by the Licensor's price list and is established in the invoice issued to the Licensee, including VAT, calculated at the rate provided for in paragraph 3 of Article 164 of the Tax Code of the Russian Federation.

10.3. The Licensee pays the invoice within 10 (Ten) business days from the date it is issued by the Licensor as an advance payment by depositing 100% of the amount specified in the invoice to the bank account or to the Licensor's cash desk.

10.4. The transfer of the right to use Report.ru is formalized by an acceptance certificate and an invoice. The Licensor sends the Licensee an acceptance certificate and an invoice, signed with a qualified electronic signature of the Licensor (or his authorized person), in Diadoc within 5 (Five) calendar days from the date of receipt of payment.

10.5. In the absence of a reasoned refusal to accept the granted rights of use to Report.ru within 5 (five) working days from the date of receipt by the Licensor of the acceptance certificate and invoice in Diadoc, the transferred rights are recognized as accepted by the Licensee in full. A reasoned refusal may be submitted by the Licensee exclusively to Diadoc. The license fee paid by the Licensee after the expiration of the period specified for a reasoned refusal is not refundable.

Information Security. Confidentiality of information

11.1. The Licensor undertakes to ensure the confidentiality of personal data that has become known to it during the execution of the License Agreement.

11.2. The Licensee undertakes to comply with the Rules for ensuring information security in the workplace, is aware of the risks possible when using the Signature Key, and is responsible for failure to comply with security measures when authenticating the Key Owner.

11.3. The parties undertake to maintain the confidentiality of information classified by the parties as a trade secret in accordance with the current legislation of the Russian Federation, and which became known to the parties in the process of executing the License Agreement.

Responsibility

12.1. The parties to the License Agreement will be liable in accordance with the legislation of the Russian Federation.

12.2. The Licensor will not be responsible for incomplete and/or untimely submission of reports by the Licensee, as well as the commission/non-commission of other actions necessary for organizing electronic document flow via telecommunication channels.

12.3. The Licensor will not be responsible for the accuracy of the reports generated and sent by the Licensee.

12.4. The licensor will not be liable for direct or indirect losses, including lost profits, resulting from the use of Report.ru.

12.5. The Licensor will not be responsible for the inability to use Report.ru, which arose through no fault of the Licensor.

12.6. Illegal use of Report.ru is a violation of the legislation of the Russian Federation and is punishable by law.

12.7. If the Licensor becomes aware of the need to delete personal data posted in Report.ru and the Licensee fails to fulfill the obligation to send a notice of deletion of such personal data, the Licensor has the right to destroy personal data.

12.8. The Licensor will not be responsible for the Licensee’s failure to comply with the user documentation, the Licensee’s lack of an Internet connection, for the operation of Report.ru and CIPF on a faulty computer or a computer infected with any computer virus, the use of uncertified CIPF, as well as for the Licensee’s use of unlicensed software provision.

12.9. The Licensor will not be liable for losses incurred by the Licensee caused by technical problems if the Licensee violates the obligation established by clause 6.3.9 of the License Agreement.

12.10. The total amount of liability of the Licensor under the License Agreement, including any losses (if the Licensee in a particular case has the right to compensation for them), cannot exceed the cost of the rights and services that were sold by the Licensor to the Licensee under the License Agreement during one year preceding the moment of occurrence losses.

Representations about the circumstances

13.1. Each Party declares and confirms to the other Party that at the time of concluding the License Agreement:

• is a duly registered legal entity/individual entrepreneur, is registered with the tax authorities and legally carries out its activities in accordance with the legislation of the Russian Federation;
• its executive body is located and carries out management functions at the address registered in the Unified State Register of Legal Entities/Unified State Register of Individual Entrepreneurs;
• has the authority, monetary, material and labor resources, as well as other conditions necessary to conclude the License Agreement and fulfill obligations under it;
• all powers necessary to conclude the License Agreement and/or carry out actions in connection with it have been duly obtained, including all necessary consents, permissions, approvals in accordance with current legislation.

13.2. The parties confirm that:

• The License Agreement is concluded voluntarily, the Parties are not misled as to the legal nature of the transaction and/or the legal consequences that arise or may arise in connection with the conclusion of the License Agreement;
• The license agreement does not violate any intellectual property rights or other proprietary rights of any third party;
• The license agreement is concluded in accordance with the current legislation of the Russian Federation and is not a transaction in which there is an interest;
• execution of the License Agreement does not entail a violation or non-fulfillment of the provisions of any other contracts, agreements, judicial or other prohibitions or orders.

13.3. A Party that relied on unreliable representations of the other Party has the right to terminate the License Agreement early, regardless of the presence or absence of losses, in the manner prescribed by clause 9.9 of the License Agreement, as well as demand compensation for losses caused by the unreliability of such representations.

Other conditions

14.1. By accepting the terms of the License Agreement, the Licensee agrees to receive additional information and newsletters at the email address and telephone number specified during registration, as well as the email address and telephone number provided to the Licensor during the execution of the License Agreement.

14.2. The Parties have the right to use each other’s names, trademarks, logos and other identifying marks of the Parties, as well as information about the fact of concluding the Agreement, including by publication on the websites of the Parties, publication and citation in the press, use in marketing materials, as well as in corporate publications : booklets about the company, examples of solutions, etc.; references to each other in interviews and presentations.

14.3. By accepting the terms of the License Agreement, the Licensee confirms that he has legal grounds for processing information belonging to him using Report.ru.

14.4. The parties undertake to inform each other within 15 (Fifteen) calendar days about changes in their details specified in the License Agreement and possible annexes to it, as well as about any decisions regarding their liquidation or reorganization as a legal entity. If one of the Parties fails to fulfill this obligation, the other Party shall not be liable for the consequences caused by such failure.

14.5. The Licensor has the right to use a facsimile of the signature (cliché with a signature) of the Licensor’s authorized person to sign documents necessary for the execution of the License Agreement, as an analogue of a handwritten signature, equivalent to a handwritten signature. In this case, these documents have the same legal force as documents signed by an authorized person of the Licensor in his own hand on the basis of paragraph 2 of Article 160 of the Civil Code of the Russian Federation.

14.6. All disputes and disagreements arising in connection with the execution and (or) interpretation of the License Agreement are resolved by the Parties through negotiations.

14.7. If it is impossible for the Parties to resolve any disagreements through negotiations, the dispute shall be resolved through arbitration proceedings in accordance with the general rules of jurisdiction, with mandatory compliance with the claim procedure for resolving disputes and disagreements. The deadline for responding to a claim is 30 (Thirty) calendar days from the date of its receipt in writing.

14.8. The personal data processing policy is published by the Licensor on the website https://kontur.ru.

Conditions for participants of promotions

15.1. Promotion participant is a Licensee who has accepted the terms of the promotion, which provides for the transfer of the right to use Report.ru for a short period of time.

15.2. The Licensor provides the Promotion Participant with a one-time simple (non-exclusive) license to use Report.ru for the period of validity of the tariff plan for the promotion participants, and the Promotion Participant accepts the granted non-exclusive property rights.

15.3. The procedure for transferring promotional rights is established by the terms and conditions of the promotion, which are published at: https://kontur.ru.

15.4. Participation in the promotion does not involve mutual settlements between the Parties.

15.5. After the end of the promotion, the Promotion Participant may continue to use Report.ru on the basis of the License Agreement by paying the Licensor a license fee.

15.6. All terms of the License Agreement that do not contradict the terms of the promotion are valid for the Promotion Participant.

General Director of JSC PF SKB Kontur E.Yu. Filatov

How to register a license agreement?

The requirement for mandatory registration of a license agreement is an important element in its proper implementation.

The license agreement must be registered with the Federal Service for Intellectual Property, Patents and Trademarks. Without registration, the contract is considered invalid. From the moment of state registration, the contract is considered concluded.

An application for registration of an agreement is submitted in the approved form. It must be signed by the persons who own the patent. The application is accompanied by: the original document of protection (patent and description of the object of the license agreement).

Within two months after filing the application, the government agency verifies the validity of all documents and their compliance with the requirements established in the field of intellectual property.

Changes and additions to registered license agreements regarding the parties, the subject of the agreement, the limit of transfer of rights, term, etc. are also subject to registration. Registration of changes occurs on the basis of agreement of the parties, in the same way as registration of an agreement.

If changes are required by one of the parties, a court decision is required. Then registration of changes occurs on the basis of a court decision.

It is worth keeping in mind that the text of a license agreement is usually a trade secret; familiarization with the contents of a registered agreement is possible only with the written consent of both parties.

Drawing up and registration of license agreements and assignment agreements

VKO-Intellect LLC specialists have extensive experience in developing contracts and supporting transactions for the transfer of rights to patents for inventions, industrial designs and utility models. We can offer different service options: from registration of ready-made agreements to their preparation and registration in Rospatent. If you have any questions, our employees are ready to answer each of them by phone or at the company’s central office.

Other services:

• Patenting
• Accelerated Patenting
• International patenting

• Patent Search
• Patent protection
• Patent evaluation

Validity period of the license agreement

According to the Law, the validity period of the license agreement cannot exceed the validity period of the exclusive right to the result of intellectual activity. If the exclusive right is terminated, the license agreement also terminates.

If the term is not determined by the parties, then as a general rule it is considered that the agreement is concluded for five years.

If the parties do not wish to be limited to a specific period, then it is possible to indicate in the contract that the right to use the object is possible for the duration of the exclusive right. In this case, with the extension of the right, the validity of the license agreement will also be extended.

How to correctly formulate license conditions

The contract must describe the subject itself - an indication of the specific software, the use of which is possible under a license. The agreement should define the ways in which the user can use the software and other requirements. If the user uses a licensed product outside the scope of the license, then such actions are regarded as a violation of the rights of the copyright holder.

For violation of the terms of the agreement, financial responsibility or termination of use of the product is provided.

It is also important in the contract to determine the circle of persons who will have the right to use the software. The total number of users may be limited by the license, and restrictions may also apply to specific individuals. In the case of cloud services, providing login and access password to third parties is prohibited. In this case, the software is not always installed on the device, which can lead to abuse if third parties get hold of the password.

The agreement may provide for the obligation for the user to periodically provide responses about the use of the software or for the owner of the rights to conduct an audit of the software, which will result in a check for unauthorized use.

Remuneration under the license agreement

The license agreement must determine the amount of remuneration to the licensor and the procedure for calculating it.

It is also possible to provide for the gratuitousness of the contract - this does not contradict the Law. But if the parties are commercial firms and the license agreement has an exclusive license that is valid worldwide, the fee for its use must be specified.

The law does not provide for a mandatory method of remuneration, but, as a rule, two forms are used:

1. lump sum payment – ​​represents a certain one-time payment;
2. royalties are periodic payments fixed in a fixed amount or as a percentage of the licensee’s income. It is advisable that the interest rate be determined by the appraiser in accordance with the standard industry royalty rates. The procedure for paying royalties can be any. When determining the frequency of payments, it is recommended to keep in mind: the specifics of the sale of goods by the licensee, the simplicity of the licensee’s reporting to the licensor, the convenience of calculating the interest rate for remuneration.

It must be borne in mind that if the licensee did not use the result of intellectual activity, this cannot be the reason for refusing to pay remuneration to the licensor.

The license agreement may establish a mixed remuneration, that is, payment of both a royalty and a lump sum payment. This can be cost-effective for both parties. The licensor covers the costs of documentation with income from a lump sum fee, which is usually up to 25% of the price specified in the contract. At the same time, a royalty in the form of interest is a guarantor for the licensor of participation in the licensee's income, and it is convenient for the licensee that he will not have to pay more remuneration than he can earn using the property.

Methods of use

Agree on how the customer will use the program. Here are the options that the Civil Code offers, but you don’t have to be limited to them:

• program playback;
• production of copies of the software in any material form, including recording on a flash drive or computer;
• sale and import of the program;
• public screening of the program;
• program rental;
• providing any person with access to the program, i.e. its placement on the Internet;
• modification - any changes to the program, for example, translation into another programming language. When allowing this use, please be aware that the modified program is new intellectual property that you do not own. Therefore, the customer can make small changes and become the author of a new program.

Example from the Elba license agreement

The licensee may use Kontur.Elba in the following ways:

• access the server around the clock, except during maintenance periods, and reproduce the graphical part (working interface) on the screen of a personal computer;
• use all the functionality of Kontur.Elbe, described by the tariff plan in the licensor’s price list;
• reproduce documentation for personal use.

You cannot use the program in ways that are not specified in the contract. Exception: those actions that are necessary for the normal operation of the program. This does not require your permission. This is established by Art. 1280 GK.

Indicate whether the licensee will be able to enter into sublicense agreements—that is, transfer the rights to the program to other people. This condition is included if the licensee will distribute your program, and you will receive interest from each of his transactions. Under a sublicense agreement, the licensee will be able to transfer only those rights that are specified in the license agreement, and only within the period of its validity.

Licensing agreement disputes

Disputes related to the license agreement relate to cases of protection of intellectual rights.

By virtue of the requirements of the Law, disputes arising from relations arising in connection with the conclusion of a license agreement are considered by an arbitration court. It does not matter who is the participant in the legal relationship - a legal entity, an individual entrepreneur or a citizen.

USEFUL : our lawyer for arbitration disputes in Yekaterinburg will build a professional line of defense to restore your violated rights.

Violation of the license agreement

Since the nature of the license agreement is of a civil nature, the provisions of the Civil Code of the Russian Federation on agreements and obligations are applicable to it.

Consequently, violation of the terms of the license agreement entails negative consequences provided for by the legislator for any civil contracts: compensation for penalties, unilateral refusal to fulfill the terms of the agreement, etc.

In addition, Section 7 of the Civil Code of the Russian Federation establishes additional liability in case of violation of the contract.

Thus, the licensor has the right to independently refuse to fulfill the contract and demand compensation for damage caused by termination if the licensee grossly violates its obligations to pay remuneration.

Consequences are also provided for in case of violation of the use of exclusive rights to the results of intellectual activity and means of individualization. You can protect your rights by demanding:

1. recognition of the right - to the one who denies the right and thereby violates the interests of the right holder;
2. termination of actions that violate the right or create a threat of violation;
3. compensation for damages . The person who illegally used the result of intellectual activity must compensate for losses;
4. seizure of counterfeit material , which contains the result of intellectual activity. Such a requirement can be presented to the manufacturer, custodian, seller, and other unscrupulous distributors and purchasers;
5. publish the court decision on the violation of exclusive rights and indicate the real copyright holder.

These requirements can be presented not only to someone who used exclusive rights without concluding an agreement with the copyright holder, but also to the licensor if he went beyond the methods of using the object of exclusive rights specified in the license agreement.

In addition to civil liability for violation of intellectual rights, there is also administrative (Article 7.12 of the Code of Administrative Offenses of the Russian Federation) and criminal liability (Articles 146, 147 of the Criminal Code of the Russian Federation).

If a legal entity or individual entrepreneur repeatedly or maliciously violates the rights of the copyright holder of exclusive rights, the court, at the request of the prosecutor, has the right to make a decision on the forced liquidation of the company or termination of the activities of the individual entrepreneur.

Good to remember

1. If you decide to sell your program, draw up a license agreement.
2. It is better to obtain a non-exclusive license, because it allows you to sell the program to other customers.
3. The subject of the agreement, methods of using the program and remuneration are three essential conditions, without which the agreement is invalid.
4. An agreement without a term is considered concluded for 5 years.
5. State registration of the agreement is not necessary if the right to the program has not been registered.
6. If you sell the program to an unlimited number of people, place an offer on the website with all the terms of the license agreement. It is considered concluded when the client accepts - pays for the program or registers in the service.
7. Place an order for program development using an author's order or contract agreement. Author's order - if you are an individual entrepreneur, contract - if you have an LLC.

The article is current as of 05/03/2017

Taxation of a license agreement

In accordance with the Tax Code of the Russian Federation, the sale of rights to the results of intellectual activity and the rights to use them on the basis of a license is not subject to VAT.

At the same time, if a mixed agreement is concluded, the subject of which is not only the result of intellectual work, then the preferential tax regime does not apply.

It is also worth keeping in mind that tax legislation considers royalties as an object of taxation. This means that if a party to the agreement is an individual, the licensee organization assumes the function of a tax agent. The licensor-individual will receive remuneration taking into account a deduction of 13% of the amount of income.

Termination of the license agreement

Having reached an agreement, the parties can terminate the license agreement.

In case of gross violation of the terms of the contract, it can be terminated by a court decision at the request of any party. A significant violation is one that entails such losses that a party is deprived of a significant amount of what it had the right to count on when concluding this agreement.

If the licensee violates the procedure for paying remuneration, the licensor has the right to withdraw from the agreement.

State registration of termination of a license agreement is not required.

Assistance from a lawyer in drawing up a license agreement

Drawing up a license agreement and submitting it with the necessary documents to the relevant executive body requires special knowledge and professional training. Minimal inaccuracy in documents or insufficient information may lead to refusal of registration.

A rational solution to this problem is to contact a lawyer who understands the intricacies of such a procedure. A lawyer will provide assistance as quickly as possible. It is possible to complete the procedure for registering a license agreement on a turnkey basis or provide assistance at its individual stages.