A common mistake we encounter in reviewing various commercial agreements in Russia is the insertion of a provision purporting to grant a counterparty a license to use intellectual property (IP), particularly in distribution agreements, but without an appreciation of the rules that govern such licenses – i.e., that such licenses are invalid unless filed with Rospatent, the federal agency responsible for enforcing Russia’s IP laws.
As a general matter, any assignment (sale), grant of a license or pledge of IP that is subject to registration should be documented in a standalone agreement. This will simplify registration and avoid disclosure of other commercial terms as a result of making the required public filing. This Quick Reference Guide summarizes the key rules related to the registration of transfers, licenses and pledges of IP in Russia, which were extensively revised in the last year. We hope you find it useful in spotting issues and planning transactions.