8) Patents and Applications as a Form of Property Flashcards
Section 30
Nature of, and Transactions in, Patents and Patent Applications
(1) A patent or patent application is personal property.
(2) Subject to s36(3) [all co-owners must consent], a patent/patent application or any right in it may be assigned or mortgaged.
(3) Its rights vest like other personal property.
(4) Subject to s36(3), a licence can be granted under a patent/patent application for working the invention and
(a) a licence can allow sub-licencing, and the licence and any sub-licences can be assigned or mortgaged; and
(b) licences and sub-licences vest like other personal property.
(5) The above subsections (2)-(4) are subject to the below subsections.
(6) An assignment, mortgage or assent [transfer from a deceased person to an inheritor] shall be void unless in writing and signed on or on behalf of the assignor, mortgagor, or personal representative, respectively.
(6A) If the transaction is by a body corporate, then the signature is under the seal of the body corporate.
(7) Assignment of at least a share of a patent/patent application or an exclusive licence under the patent/application may confer the right to bring infringement proceedings for earlier acts.
Section 32
Register of Patents
(1) The Comptroller maintains the register of patents in accordance with the rules.
(2) Rules apply to
(a) the registration of patents and published applications;
(b) the registration of transactions and events affecting patent rights;
(ba) the registration of UKIPO opinions issued under s74A;
(c) the provision of relevant evidence/documentation;
(d) the correction of errors in the register;
(e) the publicising of anything done in relation to the register.
(3) Trusts are not recorded.
(4) The register need not be in documentary form (i.e., it can be online).
(5) The public shall have a right to inspect the register, subject to the rules.
(6, 7) The public can obtain certified and/or uncertified copies of register entries upon payment of form and fee.
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(9) The register is prima facie evidence that registered events occurred.
(10) Similarly, a certified copy is prima facie evidence of the contents thereof.
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Rule 47 - s32
(Applying to register a transaction or event)
An application to register a transaction or event is made with form and fee and must include evidence of the transaction/event. The Comptroller may require further evidence and can specify a period for providing it.
Rules 103 and 104 - s32
(Addresses for service)
Anyone who does anything formally under the Act which could require the Comptroller to contact them needs to provide an address for service which is in the UK, Gibraltar or the Channel Islands. The address can be updated by notifying the Comptroller.
If someone fails to provide an address for service but the Comptroller has enough to contact them, he will set a period of two months for providing an address for service. If the they don’t comply by the deadline, or the Comptroller never had enough information to contact them to begin with, then whatever it is they were doing (e.g., their patent application, their request for a UKIPO opinion under s74A, etc.) will be treated as withdrawn.
Section 33
Effect of Registration
(1) Someone who claims to have acquired the property in a patent or patent application by virtue of any transaction or event shall be entitled over anyone who claims to have acquired the same property by virtue of an earlier transaction or event, if, at the time of the later transaction/event,
(a) the earlier transaction/event was not registered; or
(b) in the case of an application which has not yet been published, notice of the transaction/event had not been given to the Comptroller; and
(c) in any case, the person claiming under the later transaction/event did not know of the earlier one.
(2) The above also applies where the later person has acquired some right in a patent/patent application which is incompatible with a right acquired by the earlier person.
(3) The above applies in regard of:
(a) assignment of a patent/patent application, or a right in it;
(b) mortgage of a patent/patent application;
(c) grant/assignment/mortgage of a licence or sub-licence;
(d) death/dissolution of a proprietor and transfer of vested interests; and
(e) court orders transferring rights to another person or changing the name of the proprietor.
(4) For the purposes of this section, the effective date of registration is the date of the application to register.
Section 46
Licences as of Right
(1) Any time after grant, the proprietor may apply [on the form (R43)] to register that licences are available as of right.
(2) The Comptroller shall then give notice of the application to anyone registered as having a right in the patent, and if he is satisfied that the applicant is not contractually bound against granting licences, shall make the entry in the register [and advertise in the journal (R43)].
(3) Consequently,
(a) any person is entitled to a licence on agreed terms, or if no agreement is reached, on terms of the Comptroller;
(b) the Comptroller may, at the request of an existing licence-holder, exchange that licence for a licence of right;
(c) during proceedings for infringement, an infringer (so long as he is not importing something from outside the EEA) can take a licence of right, and therefore cannot have an injunction granted against him and can only pay damages up to two times the licence fees he would have paid had he started licencing from his earliest infringement;
(d) future renewal fees are halved.
(3A) Under subsection (3)(c) above, this can be done at any time during proceedings without the infringer admitting liability.
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(4) A licensee under a licence of right may (unless the licence expressly states otherwise) request that the proprietor take action against an infringer, and if the proprietor refuses or neglects to do so within two months of the request, the licensee may bring infringement proceedings in his own name as if he were the proprietor, with the proprietor a co-claimant.
(5) The proprietor is not liable for costs or expenses in this circumstance unless he actively takes part in the proceedings.
Section 47
Cancellation of Availability of Licences of Right
(1) The proprietor may apply [on the form (R43)] to the Comptroller at any time to withdraw the registration of the availability of licences of right (the register entry under s46).
(2) The balance of all discounted renewal fees must be paid and any licensees need to consent to the application.
(3) [Within two months of the register entry under s46 being made (R43)], anyone can apply for cancellation of the entry is they have an existing agreement with the proprietor that precludes licences of right.
(4) If the Comptroller agrees, then he will cancel the entry and specify a period in which the proprietor must pay the balance of any discounted renewal fees, and if he fails to do so then the patent will cease to have effect.
(5) Once the entry is cancelled, the proprietor’s rights and liabilities are as if the entry was never made.
(6) If the proprietor applies for cancellation under subsection (1) then anyone may give notice to the Comptroller opposing the application, and if a third party applies for cancellation under subsection (3) then the proprietor can give notice to the Comptroller opposing the application. The Comptroller will decide if any such opposition is justified.
Section 68
Effect of Non-Registration on Infringement Proceedings
Where someone becomes the proprietor by virtue of a transaction or event and the patent is then infringed before said transaction or event is registered, the court or Comptroller will not award costs in infringement proceedings to the proprietor unless
(a) the transaction or event is registered within sixth months of it occurring; or
(b) the court or Comptroller is satisfied that it was not practicable to register within the sixth months and it was registered as soon as practicable thereafter.
Section 118
Information about Patents and Applications, and Inspection of Documents
(1) After publication of an application, anyone can request information or to inspect documents relating to the application or granted patent, subject to any prescribed restrictions.
(2) This cannot be done without the consent of the applicant before publication.
(3) However, subsection (2), shall not prevent the Comptroller from
(a) sending the EPO information he is required to send under the EPC;
(aa) sending any overseas patent office information that they request;
(b) providing bibliographic information about the unpublished application;
(c) allowing the Secretary of State to inspect the application under s22.
(3A, 3B) Point (aa) above only applies with regard to agreed working arrangements between offices, and these arrangements must ensure that confidential information si protected.
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(4) If someone is notified that the applicant will bring infringement proceedings against them once an as-yet unpublished application is published, he can make a request under subsection (1) even though the application is unpublished.
(5) If a second application is filed with respect to any part of the subject matter of an earlier, first application, and the second application is published, any person can make a subsection (1) request with regard to the first application even if it was never published.
Rule 54 - s118
Requests for Certain Information
Anyone can request on the prescribed form that the Comptroller notify them of a particular event occurring (e.g., a request for an opinion under s74A, an application being published, the applicant failing to pay the examination fee on time, a certain entry being made in the register, etc.) and the Comptroller must so notify them as soon as practicable after the event. However, the Comptroller will not give him information or access to a document which he would not have access to under s118.
