Disputes over license agreements

Pre-trial dispute resolution

Most disputes under license agreements are subject to pre-trial resolution. In addition, the claim procedure may be provided for by the agreement, and failure to comply with it will result in the court refusing to consider the claim.

Analysis of the terms of the license agreement

The first stage is a legal examination of the agreement: the subject of the license, the scope of the rights granted, the terms, territorial restrictions and the procedure for calculating the remuneration are determined. The presence of state registration is also checked - for exclusive licenses it is mandatory.

Collecting evidence of use of the object

The licensor must confirm the fact of use of the IP object, especially if it claims that the volume has been exceeded or illegal use. This may be screenshots, log files, technical examination results, revenue data, marketing materials and other evidence.

Preparing a claim

The claim is drawn up indicating the violations, calculation of the debt, reference to the terms of the agreement and deadlines for voluntary settlement. It is sent to the legal and e-mail address, with the fact of sending recorded. If there is no response within the specified period, it is possible to proceed to litigation.

Negotiations to revise the terms

Sometimes the parties use the dispute as a reason to re-register the licensing relationship: rates change, the scope of rights is reduced, new terms are agreed upon. In such a case, an additional agreement is concluded, recording the new agreements.

Conclusion of an agreement on termination of a license

If further cooperation is impossible, the parties may draw up an agreement on termination of the contract. It sets out the terms of completion of obligations, the date of termination of use of the facility and the procedure for final settlements.

Litigation on a license agreement

Arbitration courts consider claims from both copyright holders (licensors) and licensees, including claims for the recovery of remuneration, prohibition of use, return of overpayment, and challenging the terms of the contract.

Preparation of a statement of claim

The claim shall contain information about the concluded agreement, reference to the provisions of Chapter 69 of the Civil Code of the Russian Federation, violations of the terms, calculations of remuneration and the fact of use of the object. It is necessary to attach a copy of the agreement, evidence of the transfer of rights and documents confirming the use of the object.

Proving the fact of use of the object

If the subject of the dispute is over-sizing, continued use after the expiration date, or non-payment, technical and economic evidence is of key importance. This could be software code, sales reports, log files, advertising using the trademark, circulation data, etc.

Justification of the amount of the license fee

The court must be provided with calculations of the debt taking into account the terms of the contract. If the calculation formula is controversial or not defined, an economic examination is appointed. The court may also use similar rates on the market or general provisions of the Civil Code (Articles 424, 1235).

Representation of interests of the parties

The licensor may demand termination of the use of the object, debt collection and compensation for damages. The licensee, in turn, has the right to declare the contract invalid, return of overpayment or abuse of rights by the copyright holder.

Execution of a court decision

After the decision is made, the issuance of a writ of execution is initiated, work with the FSSP is initiated, measures are taken to prohibit the use of the property, collect funds or ensure the cessation of the violation of rights.

Typical difficulties in dispute resolution

Disputes over license agreements are characterized by high legal and technical complexity. Errors in wording, lack of registration or failure to prove the fact of use of the object may lead to the denial of the claim or disproportionate recovery.

No registration of the contract

An exclusive license requires state registration with Rospatent. The absence of registration means that the licensee has no legal basis for using the object, and the agreement itself may be declared invalid or not concluded.

Uncertainty of the subject or scope of the license

If the contract does not specify a specific object, its identification features, the permissible method and volume of use, the court may reject the claim due to the absence of an agreed subject.

Unproven use of the object

Even with obvious use of an intellectual property object, the court requires specific evidence: placement of a trademark, software installation certificates, sales data, log files, licenses within the corporate network. In their absence, the claims remain unproven.

Disputes over the terms of the contract

If the license term is not specified or has expired, the licensor may demand termination of use and recovery of damages. However, the licensee may refer to automatic renewal if the contract provides for renewal in the absence of objections.

Disagreements on the calculation of remuneration

When compensation is calculated based on revenue, production, or other variables, the parties often disagree on the basis for the calculation. The lack of a formula or supporting documents makes it difficult to substantiate the amount of the claim.

Conflicts between the exclusive licensee and the copyright holder

If the contract does not specify who has the right to go to court in the event of a violation of rights, parallel claims or procedural errors arise. This may result in a refusal to consider the case or the need to prove procedural status.

Legal support of disputes in KDpartners

Disputes over license agreements require high qualifications in the field of intellectual property, contract law and arbitration process. KDpartners specialists support legal entities at all stages of conflict resolution - from the analysis of the legal situation to the execution of a court decision

At the first stage, lawyers assess whether the subject of the license has been individualized, whether there are restrictions, whether the agreement has been registered, whether the terms of use and calculation of remuneration have been correctly determined.

Specialistsdraw up claims, lawsuits, objections, counterclaims, and requests for expert assessments. All documents are supported by technical, accounting, and legal evidence confirming the client's position.

Trial lawyersrepresent the interests of both licensors and licensees. We handle disputes on the collection of royalties, protection of exclusive rights, invalidity of contracts and illegal use of IP objects.

After receiving the decision, we support the client at the execution stage: we initiate debt collection measures, issue prohibitions on the use of the property, interact with the Federal Bailiff Service and monitor the actual execution of the court injunction.

Support of disputes under foreign licensing agreements

Concluding a license agreement with a foreign party requires precise regulation of the applicable law, jurisdiction and dispute resolution procedure. In the absence of an arbitration clause or an unambiguous indication of the competent court, difficulties arise both in filing a claim and in enforcing the decision.

In practice, the most common disputes are non-payment of royalties, exceeding the volume of use, violation of territorial or time restrictions. Such violations entail the need to collect technical evidence, conduct an economic examination and verify the fact of using the intellectual property object outside of Russia. The specifics of cross-border transfers, withholding taxes and currency restrictions are taken into account.

When protecting the interests of the licensor, it is important to confirm the fact of transfer of rights, proper execution of the agreement and the presence of state registration - when transferring an exclusive license. In the event of a refusal to fulfill obligations by a foreign licensee, provisions on force majeure, current restrictions and sanctions are taken into account.

KDpartners supports disputes on international licensing contracts in arbitration institutions (ICC, LCIA, ICAC) and foreign jurisdictions. We undertake the preparation of a legal position, evidence base and interaction with local representatives. We also support the recognition and enforcement of foreign decisions in the Russian Federation and in foreign countries.