Reminder: No-Russia IP Clause
As announced in our previous blog post on the Swiss government’s implementation of the EU’s 14th Russia sanctions package in the Ordinance on Measures in Connection with the Situation in Ukraine (“Ukraine Ordinance”), new intellectual property rights-related restrictions against Russia will come into effect on 26 December 2024 (see previous blog post here). Under these new restrictions, parties transferring intellectual property to third country counterparties must contractually prohibit the reexport thereof to Russia.
Under a new Article 14g paragraph 1 of the Ukraine Ordinance, when:
- selling intellectual property rights or trade secrets,
- licensing or otherwise transferring such rights and secrets, or
- granting rights of access to or re-use of materials or information protected by intellectual property rights or constituting trade secrets,
in connection with so-called “High Priority Goods” listed in Annex 31 of the Ukraine Ordinance, the use of such rights and secrets intended for sale, supply, export, transportation and transit to or use in Russia must be contractually prohibited to the counterparty. Further, such counterparty must be required to prohibit such use by potential sublicensees.
The contracts with the counterparty in accordance with paragraph 1 must provide for appropriate remedial measures in the event of a breach (paragraph 2). If the restrictions according to Article 14g paragraph 1 of the Ukraine Ordinance are violated, SECO must be immediately notified (paragraph 3).
These restrictions shall further not apply to transactions that were contractually agreed before 17 October 2024 and have been fulfilled by 26 June 2025 or whose contracts have expired, in which case the earlier date shall apply (Article 35 paragraph 31 of the Ukraine Ordinance).
Companies should now ensure to timely implement these restrictions.
