10) Transfer of Rights

Question 1

Who must consent for there to be an assignment, mortgage or licence of an app/patent owned by 2 or more applicant/proprietors?

Answer 1

All of the co-owners must consent

Question 2

If a licensee/licensor dies, what is the effect on the licence?

Answer 2

Licence remains in place and may be vested by an ASSENT of the Personal Representative of the deceased

Question 3

Under UK law, who must sign the Assignment?

Answer 3

Signed by or on behalf of the Assignor

No need for the assignee

Question 4

In what situation does a 3P other than the Proprietor have the right to bring infringement proceedings?

Answer 4

If the app/patent has be:
1. Assigned; or
2. Exclusively Licensed

Question 5

What form should you use to register a transaction?

Answer 5

PF21

Question 6

Why is £1 (nominal fee) provided to the assignor in exchange for a patent?

Answer 6

To ensure there is consideration, so that the assignment falls under contract law

Question 7

Can a person request that a correction (error) or change be entered in the register?
If so, to what and how?

Answer 7

Yes, changes or typos in:
1. Name
2. Adress
3.AFS

Request using PF20

Question 8

How would someone register a transaction on the UKIPO register?

What is the DL?

Answer 8

1. Use PF21 & provide evidence of transfer
2. Pay a fee

DL = 6M or as soon as practical after Date of Transfer

Question 9

What is the consequence of not registering transfer with 6M of its date of transfer or as soon as practical after that date?

Answer 9

1. If transaction not registered, then it is unenforceable against a subsequent transaction
2. Cost/Expenses for Infringement proceedings will not be awarded to:
   - Assignee
   - Exclusive Licensee

Question 10

What conditions must be met for a Subsequent licence to supersede an earlier licence?

Answer 10

1. Earlier licence was not registered
2. Subsequent licence was obtained/registered by an innocent 3P (in good faith)

Question 11

Can you record a transfer on the register of:
1. An unpublished app
2. A patent which has lapsed
3. A revoked patent?

Answer 11

1. Yes, details of the transaction will be published on the Register
   NB. If change of Ownership, resubmit PF1 prior to publication.
2. Yes, if lapse due to non-payment of fees
3. No, effect of revocation is ex tunc so patent deemed never to have been granted

Question 12

Where should you record assignments to EP(GB) apps?

Answer 12

EPO requires that Assignments are recorded up to end of Opposition period

Also need to record using PF21 at UKIPO but only for validated EP(GB) [not pending]

Question 13

How can a 3P request inspection of the Register?

Answer 13

PF23 + fee
But only “non-excluded” documents

Question 14

What documents are not allowed to be inspected by a 3P (Excluded documents)?

Answer 14

1. Unpublished docs
2. Doc filed at UKIPO <14 days ago
3. Internal UKIPO docs
4. Requests to inspect

Question 15

In which case will UKIPO allow inspection of particulars relating to an unpublished document?
Does the UKIPO need consent from the Applicant?

Answer 15

s118(4)
If an alleged Infringer is notified that an Applicant aims to bring infringement proceedings against them.

No consent needed, but the Applicant will be notified.

Question 16

In what situations, can a 3P request to inspect an unpublished app?

Answer 16

1. Threat of infringement proceedings
2. Inter-office info sharing (EPO) or for Secretary of State (s22 assessment)
3. If a 1st (unpublished) app is wholly/partially replaced by a 2nd app (e.g., divisionals, fresh apps but NOT priority apps)

Question 17

How can a 3P request to be notified of an event?

Answer 17

PF49 to request a “Caveat”

Question 18

Must you register transactions during PCT phase?

Answer 18

WIPO does not have a register, so licences can’t registered.

Possible to register Assignments/ Licences to the IB during PCT stage

Question 19

What is the benefit to the Patentee of requesting licences as of right?

Answer 19

Reduces the renewal fees by 50% provided the patent is available for a licence AOR before the anniversary of the FD

Question 20

How does a patent become licensable as of Right?

Answer 20

Patent is entered in to the Register:
1. Voluntarily at the request of the patentee (PF28)
2. Compulsorily by order of the Comptroller

Question 21

When can an entry that a licence is available AOR be recorded in the Register?

Answer 21

Only once the patent has been granted

Question 22

Does a licensee AOR have the right to initiate infringement proceedings?
If so, what is the DL?

Answer 22

Yes, but he must first:
1. Instruct proprietor to take action.
2. If proprietor does, not licensee has 2M from request to take action.

Question 23

Can a 3P oppose the entry of a patent onto the Register for licence AOR? Why would they?

If so, what is the DL? Is it extendable?

Answer 23

Yes, anyone can oppose. For example, if they claim that Proprietor is precluded by a contract

DL = 2M of the request to enter the Register [not extendable]

Question 24

When an AOR licensee starts an infringement action, who will be liable for cost/ expenses?

Answer 24

The licensee

NB. The proprietor as a co-claimant is not liable unless they actively participate in the action.

Question 25

Can a 3P which already has a licence for the patent take out a Licence AOR?
If so, why would they do that?

Answer 25

Yes, a licensee can exchange his currently licence for licence AOR.

Would be beneficial if Licence AOR has more favourable terms

Question 26

Can an infringer take out a licence AOR? Why would they do that?

Answer 26

To:
1. Avoid an injunction
2. Limit the amount of damages
Maximum liability for only 2X retrospective licence fee

Question 27

Who can apply for cancellation of the Licence AOR and when?

Answer 27

The proprietor
At any time after the entry of Licence AOR on the Register is made

Question 28

How can the proprietor apply for Cancellation of Licence AOR?

Answer 28

PF30
Repayment of a sum equal to the balance of all renewal fees (halved during the time of Licence AOR)

Question 29

Is the request for Cancellation of Licence AOR advertised?

Answer 29

Yes, advertised in the OJ

Provides an opportunity for 3P to oppose

Question 30

What 2 acts done by the patentee in relation to Licences AOR can a 3P oppose.
What is the DL?

Answer 30

1. Requesting a Licence AOR
2. Requesting cancellation of Licence AOR

Within 2M of the request