The President of the Russian Federation signed a decree that imposed restrictions on transactions involving the acquisition by Russian companies of exclusive intellectual property rights from companies from "unfriendly" countries. Read about the new procedure for making such transactions in the material below.
What deals fall under the new Order?
The new Order covers only one category of transactions — the alienation by right holders (persons from "unfriendly" states) of exclusive intellectual property rights by purchasers (Russian residents). Both legal entities and individuals can fall under this category.
At the same time, the Order does not apply to the following transactions:
licensing and sublicense agreements (including with exclusive licenses);
agreements on the alienation by Russian copyright holders of exclusive intellectual property rights in favor of foreign persons, including persons from unfriendly foreign states;
agreements on alienation by right holders—persons of unfriendly foreign states to foreign purchasers of exclusive rights to intellectual property objects protected in Russia;
agreements on alienation by foreign right holders who are not "persons of unfriendly foreign states" of exclusive intellectual property rights in favor of Russian purchasers;
transactions, the amount of the acquirer’s obligations for which does not exceed 15 million rubles.
To which intellectual property objects does the Decree apply?
The provisions of the Decree apply to the following intellectual property objects:
trademarks;
objects of patent rights (inventions, utility models, industrial designs);
know-how;
commercial designations, the exclusive right to which can be transferred to another person only as part of the enterprise to which they relate (clause 4 of Article 1538 of the Civil Code of the Russian Federation);
topology of integrated circuits;
breeding achievements.
Please note that the issue of extending the requirements of the Decree to software transactions remains open. It is assumed that everything will depend on the specific case and the analysis of the contract.
However, the requirements of the Order do not apply to transactions with such objects as:
works of science, literature and art;
results of performance activity (performance);
phonograms;
messages from broadcasting or cable broadcasting organizations
brand names (as they are not subject to alienation).
What restrictions does the Order impose?
When making transactions on the alienation of intellectual property rights, the following rules will be taken into account:
The presence of a special permit from the Government Commission for the Control of Foreign Investments in the Russian Federation (the Legal Commission).
Making payments on such transactions through special accounts of the "O" type (in case of a decision by the Management Board).
However, the Decree provides for cases when funds must be transferred to an account of type "O", regardless of whether the Legal Commission sets such a condition in its permit.
Such cases include the fulfillment of monetary obligations under transactions made before the date of entry into force of the Order, which are not fully or partially fulfilled on that day. This requirement applies to payments that, on the date of entry into force of theOrder, were not made in violation of the deadline for fulfilling obligations under these transactions.
Is the Order retrospective?
The Order entered into force on May 20, 2024, but its effect is retrospective in relation to transactions for which the monetary obligation (in whole or in part) was not fulfilled on time on the date of entry into force of the Order (i.e. the payment deadlines for the relevant exclusive rights alienation agreements were violated).
If you have any questions about transactions with intellectual property rights, please contact Acsour experts.