Licensing & IP Property

Question 1

Section 30 PA77

Nature of, and transactions in, patents and applications for patents

Specifically subsection (1), (2) and (3) (paraphrased)

Answer 1

(1) A patent or application is personal property and rights therein may be transferred, created or granted.
(2) A patent or application and any right in it, maybe assigned or mortgaged.
(3) A patent or application and any right in it may be vested by assent of personal representatives.

Question 2

Section 30(4) PA77 - Licences (paraphrased)

Answer 2

• A licence may be granted to work an invention of a patent or application
• a sub-licence may be granted under a licence
• licences or sub-licences may be assigned or mortgaged
• licences or sub-licences may be vested by an assent of personal representatives.

Question 3

Section 30(6) & (6A) PA77 - Transactions (paraphrased)

Answer 3

An assignment, mortgage or assent shall be void unless

• it is in writing and
• signed by or on behalf of the assignor or mortgagor - if by a body corporate then signature under seal of body corporate
• signed, in the case of an assent or other transaction, by a personal representative, by or on behalf of the personal representative

Question 4

Section 30 (7) PA77 - Exclusive License

Answer 4

An assignment of a patent or any such application or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 61 or 69 below for a previous infringement or to bring proceedings under section 58 below for a previous act.

Question 5

Section 31 PA77 - Scotland (paraphrased)

Answer 5

• Section 30 above shall not extend to Scotland. This section applies instead.
• Applications and patents may be assigned
• Applications and patents may have security granted over them
• A licence may be granted, under any patent or any application for a patent, for working the invention which is the subject of the patent or the application.
• Sub-licences may be granted under any such licence
• Any such licence or sub-licence may be assigned and security may be granted over it.
• Any assignation or grant of security under this section may be carried out only by writing subscribed in accordance with the Requirements of Writing (Scotland) Act 1995
• Assignee or licensee conferred the right of the assignor or licensor to bring proceedings

Question 6

What does section 11(2) about applications where none of the original applicants is retained after entitlement proceedings?

Answer 6

• Licences or other rights lapse on registration of the new name(s)…
• …or, where the application is unpublished, on the making of the order…
• …unless in either case the order or directions provide otherwise

Question 7

Under s.11(1), what happens if an application maintains at least one of the original applicants after an entitlement dispute?

Answer 7

Any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.