PA 47 – Cancellation of entry made under Section 46; PR 75

Question 1

What does S47 concern

Answer 1

Cancelling of a licence of Right under S46

Question 2

How can a proprietor apply to cancel a licence of right

Answer 2

S47(1)
The PROPRIETOR can apply to cancel the licence using PF30 at any time after the licence of right was registered (R43)

Question 3

What must the proprietor do to cancel a licence of right

Answer 3

S47(2)
They must pay the balance of ALL discounted renewal fees, and ANY licensees need to CONSENT to the cancellation

Question 4

What is the time limit for an existing third party apply to cancel a registrations of a licence of right

Answer 4

S47(3)
An existing THIRD PARTY may apply for cancellation of an entry made under S46 within TWO MONTHS of the date of entry,

Question 5

What are the conditions for an existing third party to apply to cancel a licence of right registrations

Answer 5

S47(3)
IF they have an existing agreement with the proprietor that precludes licences of right

Question 6

How can an existing third party apply to cancel a registration of a licence of right

Answer 6

Using FORM 2 and with supporting material (and FEE)

Question 7

What happens if the Comptroller agrees with an existing third party that a registration of licences of right should be cancelled.

Answer 7

S47(4)
The Comptroller will cancel the entry in the register and require the proprietor to pay the balance of any discounted renewal fees within a specified time limit

Question 8

What happens if a patent proprietor fails to pay the balance of discounted renewal fees when a licence of right is cancelles

Answer 8

The patent will cease to have effect

Question 9

What happens once a licence of right registrations is cancelled

Answer 9

S47(5)
The proprietors rights and liabilities are as if the entry was never made

Question 10

How is a cancellation of a licence of right opposed

Answer 10

S47(6)
application for cancellation may be opposed WITHIN TWO MONTHS using the rules for proceedings heard before the Comptroller

Question 11

Who/Why might a party oppose a cancellation of a licence of right

Answer 11

non-licensees e.g. potential infringers (as they wouldn’t have the ability to take a licence and reduce costs)
proprietor themselves if applied for by a third part

Question 12

What events does the Comptroller advertise in the OJ

Answer 12

R75
any event to which it is possible to object under Schedule 3 part 2 or part 3 (i.e. any opposition that starts or responds to proceedings) unless the Comptroller determines that no-one could reasonably object

Question 13

What type of oppositions start proceedings

Answer 13

Schedule 3 - part 2
S27(5) opposing amendment after grant
S29(2) opposing surrender of patent
S47(6) opposing cancellation of licence of right, by proprietor
S75(2) opposing amendment during infringement or revocation proceedings
S117(2) opposing correction of error in patents and applications

Question 14

What type of oppositions are in response to proceedings

Answer 14

S47(6) opposing cancellation of a licence of right, by a third party
S52(1) opposing applicant for compulsory license
S52(2)(b) opposing application to cancel compulsory licence