Another essential element for the emergence of non-operational products is the use of an unrequited right. In order to avoid the tax risk of the non-operating product, the parties should provide in the contract for the free use of the IP object transferred by the corresponding counterparty for the acquisition of relevant property rights. The consideration can be agreed in cash or in some other form (for example. B by the provision of the rights to certain works or by the provision of certain services, such as .B obligation for the licensee to place the rights holder`s trademarks in advertisements). This consideration should be provided directly for the acquisition of relevant intellectual property rights. However, even in the case of a free licensing agreement, the parties may agree that the policyholder can use the IP right covered by the contract for a certain period of time, without paying royalties. This happens, for example. B where a subject has entered into a non-free licensing agreement, but before the registration of the mark by the state on goods is used without consideration to the rights holder. Thus, the tax authorities may conclude that during this period, the taxpayer used the mark without consideration and that there is therefore no operating income. In order to avoid this tax risk, parties to an unpaid licensing agreement should include a retroactive clause that their provisions (including the provision for payment of consideration) should apply to relationships between the parties from the date of signing the contract, providing a separate consideration for the use of the mark prior to the registration of the corresponding state, which should then be paid by the taker. As of 1 January 2021, the VAT exemption for the granting of software and database rights under a licensing agreement will be abolished. The new VAT exemption applies to the licensing of “domestic software”, i.e.
software and databases included in the single register of Russian software and databases (the register is available under reestr.minsvyaz.ru/ and currently includes 6,870 programmes). There is no longer a need for a licence agreement for the VAT exemption. If such intellectual property rights are transferred under an agreement other than a licensing agreement or as part of a joint agreement with an element of licensing, the VAT exemption would not apply to turnover. The exception would also not apply to computer programs when imported into Russia on physical media. Therefore, the exploitation of intellectual property by the taker does not generate operating income for a certain period of time without payment of royalties under the unpaid licensing agreement, provided that the parties have extended the unpaid relationships for the period for which the taker then paid royalties. IP transactions can raise complex tax issues that should be the subject of specialized advice. But the intellectual and ip lawyer must have at least a fundamental understanding of tax issues so that they can identify tax issues, possibly call on specialists and (especially if the transaction does not justify the close involvement of a tax expert in the negotiations) develop formulations to deal with tax issues in IP agreements. Tax aspects of unlicensed licences Sometimes the parties to a licensing agreement indicate that the corresponding rights are transferred to the licensee without consideration. This may result in tax risks for the Russian licensee.