CHINA Law and Practice Contributed by: Hans She, Muran Sun, Yichen Zhou and Herman Zhang, Fangda Partners
10.3 Requirements or Restrictions to License an Intellectual Property Right To license a patent, the parties concerned shall conclude a written patent licensing agreement, and it is suggested to submit the agreement to the CNIPA for record within three months of the date when the agreement enters into force. There are three options for licensing: • non-exclusive licence – the licensor reserves the right to exercise the patent by itself and the right to license any third party to exercise the patent; • sole licence – the licensor reserves the right to exercise the patent by itself but cannot license any third party other than the desig- nated licensee to exercise the patent; and • exclusive licence – only the designated licen- see can exercise the patent. Regardless of the type of licence granted, the licensee has no right to license a third party except the entity or individual as stipulated in the licensing agreement to exploit the patent. 10.4 Procedure for Licensing an Intellectual Property Right The execution of a patent licence is finalised when the patent owner signs the written licence agreement with the licensee. At the same time, the patentee is required to submit an applica- tion form, identification of the parties, and the agreement to the CNIPA for record within three months. The CNIPA shall announce the contents of the agreement in the Patent Gazette. The absence of record will not invalidate the con- tract, but it might render the agreement unen- forceable against a bona fide third party if not officially recorded.
ment disputes, the parties can negotiate to set- tle them. If the negotiation fails, the parties can request the competent administrative depart- ment to deal with the dispute. Settlement, medi- ation and arbitration are also commonly adopted in civil disputes involving intellectual property rights. 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights To assign the right to apply for a patent or an existing patent right, the parties concerned shall enter into a written agreement, and this agree- ment has to be registered with the CNIPA. The assignment shall come into force as of the date of registration by the CNIPA. For invention or util- ity model patent applications or patents, if the assignor is a Chinese entity or individual and the assignee is a foreign entity or individual, a licence or registration showing the approval by China’s international trade regulatory authority shall be submitted during the assignment regis- tration to the CNIPA. 10.2 Procedure for Assigning an Intellectual Property Right First, the parties shall duly negotiate and sign a patent assignment agreement in writing. Then the parties shall file a Statement for Change in Bibliographic Data to the CNIPA to change the registered patentee, pay the acceptance fee, and submit the agreement as proof. The assign- ment comes into force at the date of registration by the CNIPA.
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