PA 46 – Patentee's application for entry in register that licences are available as of right; PR 43, 73

Question 1

what does S46 concern

Answer 1

licences of right

Question 2

when and how does a proprietor register that a licence of right might be available

Answer 2

S46(1)
Any time after grant, a proprietor may apply on FROM 28 (R43(1)) that licenses are available as of right

Question 3

What will the Comptroller do if a licence of right is registered

Answer 3

S46(2)
They will inform any current rights holder of the change, and ensure that there are no contractual obligations prohibiting licencing,

and
R43(2) advertise in the OJ

Question 4

Who is entitled to take a licence of right

Answer 4

S46(3)
Consequently,
a) any person is entitled to a licence on agreed terms, or if no agreement, on terms of the Comptroller
b) the Comptroller may exchange current licences with licences of right (if these have more favourable terms)

Question 5

What terms are given for a licence of right

Answer 5

S46(3)

a) any person is entitled to a licence on agreed terms, or if no agreement, on terms of the Comptroller
b) the Comptroller may exchange current licences with licences of right (if these have more favourable terms)

Question 6

Can an infringer take a license of right, and how does this affect their payment of damages

Answer 6

S46(3)
c) any infringer who takes a licence may then only pay TWO TIMES a RETROSPECTIIVE licence

Question 7

What happens to renewal fees if a licence of right is registered

Answer 7

S46(3)
d) the renewal fee then payable is HALVED after registration

Question 8

When can an infringer take a licence of right, and how does this affect liabilities

Answer 8

S46(3A)
At any time during proceedings without the infringer admitting liability

Question 9

What is the period for considering a reduction in renewal fees due to licences or right

Answer 9

S46(3B)
up to the renewal date (i.e. up to and including the imminent anniversary of filing)

Question 10

What can a licence of right request regarding infringement

Answer 10

S46(4)
A licensee as of right may, unless their licence expressly states otherwise, request the proprietor to defend against infringement. after TWO MONTHS from such a request, they can act themselves if the proprietor does not, with the proprietor drawn in as a co-claimant (i.e. like an exclusive licensee/co-owner)

Question 11

What is a proprietor co-claimant liable for costs if they are drawn into infringement proceedings

Answer 11

S46(5)
They are not liable for costs/expenses unless they actively participate in the licensee’s action

Question 12

In what circumstances will an infringer taking a licence of right allow for the avoidance of an injunction and limitation of damages

Answer 12

In all cases except where importation is from outside the EEA (still applies post Brexit)

Question 13

What are some typical terms of agreements

Answer 13

Royalties by comparison with existing royalties, by accounting, or by profit sharing
sub-licensing can be banned, as the proprietor still has the right to choose terms and be the licensing party
Can still impose import/export bans outside the EEA

Question 14

What happens where the Comptroller arbitrates terms for a license of right

Answer 14

R89 of the rules on proceedings apply

Question 15

How are proceedings by a third party requested for licences of right disputes

Answer 15

R89(1)
using FORM 2, and submitting a draft of the proposed licence in duplicate

Question 16

What does the Comptroller do once a third party has applied with a proposed licence of right

Answer 16

R89
The Comptroller notifies the proprietor and sends them a copy of the draft licence, and
sets a deadline for the proprietor to set out their own statement of grounds if they wish

Question 17

What happens if the proprietor agrees with an applicant to a licence of right

Answer 17

R89
They needn’t respond to the comptrollers notification with a draft of the licence

Question 18

What happens if the proprietor disagrees with an applicant to a licence of right

Answer 18

R89
The proceedings before the Comptroller continue as normal (R76) with the proprietor as claimant, an the applicant as defendant.

Question 19

What do the rules for proceedings before the Comptroller apply to

Answer 19

R73(1)
a) applications, references and requests listed in Part 1 of Schedule 3, and
b) oppositions listed in part 2 of schedule 3

Question 20

Who is a claimant

Answer 20

R73
a person who starts or is treated as starting proceedings

Question 21

Who is a defendant

Answer 21

R73
a person who files a counter-statement

Question 22

What is a statement of case

Answer 22

R73
all or part of the statement of grounds or counter-statement

Question 23

What is a statement of grounds

Answer 23

R73
statement filed by the claimant

Question 24

What is a statement of truth

Answer 24

R73
attesting that the facts in a document are true

Question 25

What is a witness statement

Answer 25

R73
written statement signed by a person and containing the evidence which that person would be allowed to give orally