Patent Law (UK) - Licensing Flashcards
An overview of patent licensing in the UK.
What is the legal status of patents under the Patents Act 1977?
Patents are sui generis personal property.
Explanation: Patents are treated as a unique class of personal property under the Patents Act, unlike traditional choses in action.
What is required to validate a patent assignment under UK law?
A written and signed agreement by the assignor.
Explanation: Section 30(6) of the Patents Act 1977 mandates written assignments signed by the assignor.
What is the main feature of an exclusive license?
The licensee is granted rights to the exclusion of all others, including the patent proprietor.
Explanation: Exclusive licenses prohibit all others, including the patentee, from exploiting the invention within the agreed scope.
Under Section 67 of the Patents Act 1977, what must an exclusive licensee consider when suing for infringement?
They must include the patent proprietor as a party to the proceedings.
Explanation: This requirement ensures the patent proprietor is aware of infringement proceedings and avoids duplicative claims.
What is the consequence of failing to register a patent assignment within six months?
Legal costs may be limited in infringement proceedings.
Explanation: Section 68 of the Patents Act 1977 imposes cost penalties for unregistered assignments in patent litigation.
Patents are no longer considered choses in action but are treated as a distinct type of personal property.
True or False
True
Explanation: Patents are sui generis property under modern statutory law.
A non-exclusive license allows the licensor to continue using the invention while licensing it to other parties.
True or False
True
Explanation: Non-exclusive licenses provide simultaneous usage rights to the licensee and licensor.
Assignor estoppel prevents a person who has assigned a patent from later challenging its validity.
True or False
True
Explanation: Assignors are barred from undermining the patents they transferred, according to long-established case law.
An exclusive license is automatically terminated when a new assignment is registered.
True or False
False
Explanation: Licenses and assignments operate independently; termination clauses dictate license durations.
A fixed-term license can only be terminated early if the agreement includes express termination provisions.
True or False
True
Explanation: Early termination depends on explicitly stated terms in the licensing agreement.
What are the formal requirements for a patent assignment under the European Patent Convention (EPC)?
Assignments under the EPC must be signed by both parties and registered to be recognised (Article 72 and Rule 20(1) EPC).
Describe the process and importance of registering a patent transaction. How does registration affect enforcement?
Registration provides transparency, creates a public record of ownership, and ensures priority in case of conflicting claims. It’s required to recover full legal costs during litigation under the Patents Act 1977.
What is the practical purpose of field-of-use restrictions in a licensing agreement, and how can they benefit the licensor?
Field-of-use restrictions limit the licensee to specific applications or markets (e.g., licensing a chemical compound only for cosmetics). This ensures the licensor retains rights over other fields, maximising revenue potential.
How does arbitration benefit parties in an international licensing dispute compared to court proceedings?
Arbitration offers confidentiality, flexibility in procedure and choice of arbitrators, and ease of enforcement through the New York Convention, making it ideal for international cases.
