Transactions Flashcards
Types of transactions
Assignment; Licence; Sub-licence; Mortgage; Vesting by operation of law.
Marley v Rawlings [2014]
“When interpreting a contract, the court is concerned to find the intention of the party or parties, and it does this by identifying the meaning of the relevant words, (a) in the light of (i) the natural and ordinary meaning of those words, (ii) the overall purpose of the document, (iii) any other provisions of the document, (iv) the facts known or assumed by the parties at the time that the document was executed, and (v) common sense, but (b) ignoring subjective evidence of any party’s intentions.”
Key terms: summary of contracts
Baxter v Nederlands Produktielboratorium [1998]
PA 1977, s. 30(6)
In English law (different in Scotland), an assignment of a patent or application is void unless it is in writing and signed on behalf of the assignor (usually, the person “selling” the patent)
An assignment which does not comply with these requirements may be effective in equity.
IBM United Kingdom v Rockware Glass Ltd
Best endeavours requires a party to take “all those steps in their power which are capable of producing the desired results…being steps which a prudent, determined and reasonable [party], acting in his own interests and desiring to achieve that result, would take”.
Most favoured licensee clauses
Must notify the prior licensee if you provide a license to a subsequent licensee on better terms (and then must offer those terms to first licensee).
FRAND Terms
“Fair, reasonable, and non-discriminatory” - requirement for a patent to be incorporated into ETSI standard.
Unwired Planet v Huawei (FRAND)
Terms set on basis of willing licensee and licensor.
“The point of FRAND in standard setting is fairly easy to understand. Standards exist so that different manufacturers can produce equipment which is interoperable with the result that the manufacturers compete with one another. So the phone makers
compete in the market for phones and the public can select a phone from any supplier and be sure (for example) that if it is a 4G phone, it will work with any 4G network.
As a society we want the best, most up to date technology to be incorporated into the latest standards and that will involve incorporating patented inventions. While the inventor must be entitled to a fair return for the use of their invention, in order for the standard to permit interoperability the inventor must not be able to prevent others from using the patented invention incorporated in the standard as long as implementers take an appropriate licence and pay a fair royalty. In this way a balance
is struck, in the public interest, between the inventor and the implementers. The appropriate licence is one which is fair, reasonable and non-discriminatory. That way a standard can safely incorporate the invention claimed in a patent without giving the inventor or his successors in title unwarranted power over those who implement the
standard. Thus the public interest is served because telecommunication standards can be set using the best and most up-to-date technical expedients available and the inventor’s private interest is served because the FRAND undertaking ensures they or their successors will obtain a fair reward for their invention.”
Huawei v ZTE
Patentee of SEP can bring infringement proceedings if the infringer was put on notice, and has not reasonably agreed to accept a license on FRAND terms.
Consequences of registration
Priority over an unregistered right (good faith requirement of non-knowledge of earlier right at time of transaction p681).
Schutz v Werit
In case of infringement proceedings, costs cannot be claimed by an assignee or exclusive licensee in respect of an unregistered interest.
Application to remove license of right from register
Renewal fees for period must be paid, and application may be opposed.
Paris 5A(2&4) (compulsory licenses)
(2) Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.
(4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or ** three years ** from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license.
Rhone Poulebc v Yeda
s7(2) and s7(3) provide an exhaustive code for determining who is entitled to grant of a UK patent.
