FD1 - Transactions Flashcards
Who must consent to a licence?
All co-owners
What are the requirements for an assignment/mortgage in the UK?
In writing and signed by the assignor or mortgager (or their representative)
Must be a witness if personal or corporate seal if a company
What are the requirements for assignment of an EP?
In writing and signed by both parties
Can a licensee bring infringement proceedings for acts occurring before the agreement?
Yes - if agreed (check this)
Is there a fee for submitting a transaction?
Yes
Can an overseas owner transfer rights?
Yes - but they need a UK representative
What is the delay in uploading documents to the register?
14 days
Who maintains the register?
Comptroller
Can the public obtain register copies?
Yes - certified or uncertified, form and fee
Can the inventor’s name and address be omitted from the register?
Yes if requested
What is the effective date of a transaction?
Date of application to the register
How is a transaction registered?
File form, pay fee, provide evidence
Must a transaction be registered to be valid?
No, but may affect any costs if later party did not know about transaction
What happens if a later transaction is registered after an earlier transaction was not?
Later transaction has entitlement over the earlier one as long as the later party did not know about the earlier transaction
When will the comptroller or court not award costs or expenses for infringement?
When a transaction was not filed within 6 months of occurring (or as soon as practicable) and the infringement occurred in this time
Can you assign an EP centrally?
Yes until the end of the opposition window
Must assignments be registered to be recognised by the EPO?
Yes
Can you assign a PCT during the international phase?
Yes - notify the IB (NOT the receiving office)
Who is informed when a patentee allows licences of right?
All current licensees, who may object within 2 months (form and fee)
Who sets the terms of a licence of right?
Parties, or comptroller if they can’t agree
What happens if an infringer takes a licence of right?
Damages are limited to 2x a retrospective licence
What happens to renewal fees when licences of right are allowed?
They are halved
Can the licensee of right ask the proprietor to defend against infringement?
Yes - unless terms state otherwise
Can a licensee of right bring infringement proceedings?
Yes - if the proprietor does not act within 2 months of the request to defend (proprietor only liable for costs if they actively participate)
Can licences of right be cancelled?
Yes - any licensees must consent and proprietor must pay balance of all halved renewal fees
Who can oppose the cancellation of licenses of right?
Anyone - within 2 months
What are the rights of an exclusive licensee?
Can work the invention to the exclusion of all others (including patentee)
What are the rights of a sole licensee?
Can work the invention to the exclusion of all others apart from the patentee (note that there is no statutory provision for a sole licensee, so check the contract)
Can exclusive licensees bring infringement proceedings?
Yes - damages/account of profits takes licensee’s losses into account, proprietor is party to proceedings but is not liable for damages unless they take part
Can exclusive licensees restore a patent?
No - suggest they notify the proprietor (they can pay renewals, however)
