10) Transfer of Rights Flashcards
Who must consent for there to be an assignment, mortgage or licence of an app/patent owned by 2 or more applicant/proprietors?
All of the co-owners must consent
If a licensee/licensor dies, what is the effect on the licence?
Licence remains in place and may be vested by an ASSENT of the Personal Representative of the deceased
Under UK law, who must sign the Assignment?
Signed by or on behalf of the Assignor
No need for the assignee
In what situation does a 3P other than the Proprietor have the right to bring infringement proceedings?
If the app/patent has be:
1. Assigned; or
2. Exclusively Licensed
What form should you use to register a transaction?
PF21
Why is £1 (nominal fee) provided to the assignor in exchange for a patent?
To ensure there is consideration, so that the assignment falls under contract law
Can a person request that a correction (error) or change be entered in the register?
If so, to what and how?
Yes, changes or typos in:
1. Name
2. Adress
3.AFS
Request using PF20
How would someone register a transaction on the UKIPO register?
What is the DL?
- Use PF21 & provide evidence of transfer
- Pay a fee
DL = 6M or as soon as practical after Date of Transfer
What is the consequence of not registering transfer with 6M of its date of transfer or as soon as practical after that date?
- If transaction not registered, then it is unenforceable against a subsequent transaction
- Cost/Expenses for Infringement proceedings will not be awarded to:
- Assignee
- Exclusive Licensee
What conditions must be met for a Subsequent licence to supersede an earlier licence?
- Earlier licence was not registered
- Subsequent licence was obtained/registered by an innocent 3P (in good faith)
Can you record a transfer on the register of:
1. An unpublished app
2. A patent which has lapsed
3. A revoked patent?
- Yes, details of the transaction will be published on the Register
NB. If change of Ownership, resubmit PF1 prior to publication. - Yes, if lapse due to non-payment of fees
- No, effect of revocation is ex tunc so patent deemed never to have been granted
Where should you record assignments to EP(GB) apps?
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]
How can a 3P request inspection of the Register?
PF23 + fee
But only “non-excluded” documents
What documents are not allowed to be inspected by a 3P (Excluded documents)?
- Unpublished docs
- Doc filed at UKIPO <14 days ago
- Internal UKIPO docs
- Requests to inspect
In which case will UKIPO allow inspection of particulars relating to an unpublished document?
Does the UKIPO need consent from the Applicant?
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.
In what situations, can a 3P request to inspect an unpublished app?
- Threat of infringement proceedings
- Inter-office info sharing (EPO) or for Secretary of State (s22 assessment)
- If a 1st (unpublished) app is wholly/partially replaced by a 2nd app (e.g., divisionals, fresh apps but NOT priority apps)
How can a 3P request to be notified of an event?
PF49 to request a “Caveat”
Must you register transactions during PCT phase?
WIPO does not have a register, so licences can’t registered.
Possible to register Assignments/ Licences to the IB during PCT stage
What is the benefit to the Patentee of requesting licences as of right?
Reduces the renewal fees by 50% provided the patent is available for a licence AOR before the anniversary of the FD
How does a patent become licensable as of Right?
Patent is entered in to the Register:
1. Voluntarily at the request of the patentee (PF28)
2. Compulsorily by order of the Comptroller
When can an entry that a licence is available AOR be recorded in the Register?
Only once the patent has been granted
Does a licensee AOR have the right to initiate infringement proceedings?
If so, what is the DL?
Yes, but he must first:
1. Instruct proprietor to take action.
2. If proprietor does, not licensee has 2M from request to take action.
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?
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]
When an AOR licensee starts an infringement action, who will be liable for cost/ expenses?
The licensee
NB. The proprietor as a co-claimant is not liable unless they actively participate in the action.
Can a 3P which already has a licence for the patent take out a Licence AOR?
If so, why would they do that?
Yes, a licensee can exchange his currently licence for licence AOR.
Would be beneficial if Licence AOR has more favourable terms
Can an infringer take out a licence AOR? Why would they do that?
To:
1. Avoid an injunction
2. Limit the amount of damages
Maximum liability for only 2X retrospective licence fee
Who can apply for cancellation of the Licence AOR and when?
The proprietor
At any time after the entry of Licence AOR on the Register is made
How can the proprietor apply for Cancellation of Licence AOR?
PF30
Repayment of a sum equal to the balance of all renewal fees (halved during the time of Licence AOR)
Is the request for Cancellation of Licence AOR advertised?
Yes, advertised in the OJ
Provides an opportunity for 3P to oppose
What 2 acts done by the patentee in relation to Licences AOR can a 3P oppose.
What is the DL?
- Requesting a Licence AOR
- Requesting cancellation of Licence AOR
Within 2M of the request
