Pledge of a patent and a trademark
One of the forms of disposal of exclusive right to an intellectual property object is its pledge (Article 1233 of the Russian Federation Civil Code). The subject of a pledge, as a general rule, may be an exclusive right to any result of intellectual activity and means of individualization (invention, industrial design, utility model, trademark, know-how, computer program, database, works of literature, science, art, etc.). Registration of an exclusive right pledge is carried out by Rospatent according to the established procedure. Pledge agreements must contain a number of binding provisions that will ensure passing of expert examination during agreement registration with Rospatent.
Exceptions to this rule are cases when disposal exclusive of right is prohibited or restricted by law (right to a firm name, an appellation of origin, a trade name, a collective trademark, a secret invention). In other cases exclusive right can be freely pledged by its right holder.
Pledge of an exclusive right has “dual” nature: both general rules of civil legislation regulating pledge of property and property rights (Part I of the Russian Federation Civil Code) and special rules established by Intellectual Property laws (Part IV of the Russian Federation Civil Code, for example, the aforementioned restrictions of pledge, requirements for state registration of the pledge agreement, etc.) are applies to it.
Therefore pledge of an exclusive right to an intellectual property object can be considered, on the one part, as a disposal of exclusive (intellectual) rights, but on the other part as common civil way of securing obligations, where obligation under a pledge is accessory, ancillary to the main, for instance, credit or other similar obligation.
Pledge of intellectual rights is a relatively new institution in the Russian legal system, so its appearance raises a number of practical issues that are not properly treated in legislation for now (Whether pledge of right to obtain a patent is acceptable or not? Is it possible to abridge the right of licensor-right holder to enter into agreements for pledge of exclusive right under principal license agreement during the term of license agreement? Who can act as a pledger with respect to the exclusive right? Is pledge of licensee rights granted under a license agreement allowed? etc.). In one case legal norms of Part I and IV of the Civil Code on pledge practically agree (compare paragraph 5 of Article 1233 and paragraph 1 of Article 346 of the Civil Code with regard to pledger’s use of subject of a pledge). In other cases the same possible situations are regulated in different ways (compare paragraph 2 of Article 346 with paragraph 5 of Article 1233 of the Civil Code, subject of a pledge disposal).
Pledge of an exclusive right may be an important instrument for commercialization of intellectual property, its involvement in civil circulation. Therefore it is necessary to further develop it in the legislative and economic aspects. At this moment certain formal and legal guarantees for exercise of the right to the disposal of an exclusive right in the form of pledge have already formed. * At the same time it is obvious that institution of intellectual rights pledge will be subject to further improvement in legislation and law enforcement practice.
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*Administrative Regulations for execution by the Federal Service for Intellectual Property, Patents and Trademarks of the state function on registration of agreements for granting of a right to inventions, utility models, industrial designs, trademarks, service marks, protected computer programs, databases, integrated circuit topographies, as well as franchise agreements for use of intellectual property objects protected in accordance with patent laws of the Russian Federation (hereinafter – Regulations) defines time frame and sequence of actions (administrative procedures) in the exercise of Federal Service’s for Intellectual Property, Patent and Trademark state function (hereinafter – Rospatent) on registration of alienation under an agreement, pledge, transfer without the agreement of an exclusive right to an invention, ... (approved by the Ministry of Education and Science of the Russian Federation Order as of October 29, 2008 No. 321) Registered in the Ministry of Justice of the Russian Federation on March 05, 2009. Registration No. 13482. Official publication – 01.06.2009, Bulletin of Normative Acts of Federal Executive Bodies No .22)
Resolution of the Russian Federation Supreme Court and Supreme Arbitration Court Plenums No. 5/29 as of March 26, 2009 “On certain issues arising in connection with enactment of Part IV of the Civil Code of the Russian Federation”, refer to paragraph 12 of the Resolution.
