Assignment And Licenses Flashcards
Assignment of patent
Transferring ownership of patent to another
Most countries require written form for assignment
In the UK sufficient that only assignor will sign.
German patent does not require a written form and can be based on implied agreement.
Art 72 EPC
Assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract
Licensor
A party of licensing agreement granting the consent to use the IPR
Licensee
A party of licensing agreenent getting the consent for using the IPR
Licensing agreement
An agreeement under which a patent holder authorises third person to use his invention on the agreed terms and conditions, for a defined purpose, in a defined territory and for an agreed period of time
Non-exclusive licence
Licensor can.operate under licensed right and can also grant as many further licenses as he wishes.
Exclusive licence
Licensee alone can operate under licensed right. It is possible to grant more than.one exclusive licence provided that they are different in scope.
Full license
There is no limitation in the licensing agreemnt regards the scope of using invention and a licensee may operate in the same manner as licensor
Two main kinds of limited license
Production license
Commercial license
Active license
Contracts which require some activirt on the part of the licensors
Passive licences
Rare- require only authorisation and realising the licensor from any other obligation
Structure of licensing agreement
- Determination of the subject-mater of the license agreement
- Definitions
- Scope and duration
- Obligaigons of parties
Three general models of royalties
- Lump sum
- Recurrent (periodic) payments
- Combination
Lump sum
Often used by exclusive licenses and paid at the beginning
