Assignment of Exclusive Rights

Assignment allows a rights holder to transfer the exclusive right to a trademark or patent that its own business no longer needs: when exiting a line of business, dropping part of its product range or transferring the asset to a company that will develop it. The acquirer becomes the full rights holder: it uses the asset itself, permits partners to use it and may transfer it onwards. If the asset stays in the business and a partner needs only the right to use it, a licence agreement is concluded.

For the acquirer, the transaction is completed by the entry at Rospatent: until then, the trademark or patent belongs to the previous rights holder. State registration of a trademark assignment is carried out on the parties' application, and payments are made conditional on that entry. The right to know-how, a work or an unregistered computer program passes when the agreement is concluded, unless the agreement provides otherwise.

Rights to a trademark may be transferred for only some of the goods and services: a company transfers the brand in one product group and continues to trade under it in the others. Such a split is permissible if customers will not be misled as to who produces the goods.

Together with the asset, agreements with licensees and encumbrances pass to the acquirer: licensees continue to produce goods under the mark, and the pledgee retains its rights. Encumbrances are identified before signing, since the price and the acquirer's plans for the asset depend on them.

The previous rights holder may agree to deferred or instalment payment: if the payment deadlines are materially breached, it is entitled to recover the right through the courts and claim damages.

Within a group of companies, brands and technologies are held by a single company, which makes them easier to manage and protect, while the other companies use them under agreements with the rights holder. A transfer of a right free of charge between commercial organizations may be characterized as a prohibited gift, so remuneration is set even in intra-group transactions. Where a website, packaging design, content and other assets are transferred together with the asset, the transaction is handled as the purchase or sale of a brand.

• Opinion on the subject matterInformation on the rights holder, the scope of protection, licences, any pledge and previously filed applications.
• Assignment agreementA version with terms on what is transferred, the price, the payment arrangements and the consequences of a refusal of registration.
• Transfer registration materialsAn application to Rospatent and responses to queries.
• Closing materialsDocuments on payments and on the handover to the acquirer of the materials relating to the asset.

The outcome of the service is the work performed within the scope agreed with the client.

1. Materials

   The work is built on the documents and information about the transaction; the following points are relevant.

   • Subject matterCertificate or patent details and the list of goods and services, if the right is transferred in part.
   • PartiesWho is transferring and who is receiving, documents confirming authority, and consents, if required.
   • PriceThe amount of remuneration and the payment schedule.
   • RestrictionsAgreements and pledges known to the rights holder.
   • Counterparty's draftIts version, if any.

2. Assessment

   On the basis of the materials, the risks, the possible solutions and their consequences are identified.

3. Plan

   For the chosen option, a plan is drawn up: the sequence of steps, timing and scope of work.