Transactions and Licences Flashcards
Can patents and patent applications be licenced?
Yes, and a licence can allow sub-licencing.
Licences and sub-licences vest like other personal property and can also be assigned or mortgaged.
NB is a licence or sub-licence is co-owned, all owners must consent.
(Licences are subject to competition law)
What are the requirements for an assignment, mortgage or agreement to be valid in the UK?
They must be in writing and signed on behalf of the assignor or mortgagor (requires a witness if personal or a corporate seal if done by a company).
NB the EPO will only recognise assignments signed by both parties.
Can licensees bring infringement proceedings for previous acts?
An assignment, share or exclusive licence may confer the right to bring infringement proceedings for earlier acts.
How is a licence registered in the UK?
WHERE: UKIPO
WHEN: At any time (but note the six month requirement for costs)
WHAT: FORM PF21 and evidence (only needs to be signed by assignor)
COST: Pay fee
WHERE EFFECTIVE: UK only
Can an overseas owner of a patent or application transfer rights, assign or licence?
Yes, but they need a UK representative in order to do so.
Who is responsible for maintaining the patent register and what is recorded on the register?
The Comptroller is responsible for maintaining the patent register.
The rules apply to:
- registration of patents and published applications
- registration of transactions, instruments or events affecting patent rights
- registration of opinions issued under s74A
- the provision of relevant evidence/documentation
- the correction of errors in registration, and
- the publicising of changes to entries in the register
Trusts (express, implied or constructive) are not recorded.
What form is the register kept in and who has the right to inspect it?
The register can be online, and must be available to the public.
The public can obtain certified copies (by the Comptroller with the UKIPO seal) and/or uncertified copies of register entries upon payment of the relevant fee and submitting a form.
For online parts of the register, the public has a right to inspect and a right to extract an (uncertified) legible copy.
What is an address for service?
An address for service is provided by every applicant for a GB patent, or person who makes any request or opposition and may also be given by a patent proprietor or other rights holder (e.g. for renewal fee reminders) - in FD1 consider whether you need to make yourself the address for service.
The address can be updated in writing to the Comptroller.
The address for service must be in the UK, EEA or Channel Islands.
When will a request for a copy of a document from the register be denied?
- It is excluded under s118 (e.g. not available before the application is published)
- Copying it would infringe copyright
Who can request a correction?
Corrections of a name or address on the register should be requested using R49/50.
Anyone can request correction of: (a) their name (b) their address or (c) their address for service using PF20 (FORM).
Proof may be required by the Comptroller.
i.e. use R50 not s117/R105 to correct names and addresses (the latter are used to correct errors in patent or application specs)
What corrections does R50 relate to?
Use R50 to request corrections on errors on the register.
Anyone may request the correction of an error on the register (subject to R49) relating to the registration.
Must do so in writing and with sufficient information to identify the error and the correction.
The Comptroller can require explanation if he has doubts.
Can assignments of pending EP(GB)/PCT cases be registered at the UKIPO?
The UKIPO does not maintain a register for EP(GB) pending cases - transactions must be registered on the EPO register.
What is the effective deadline to register a transaction?
Transactions should be registered within 6 months or as soon as practical thereafter.
Otherwise, costs or expenses for infringment proceedings will not be awarded to the assignees or exclusive licensees.
How can you correct a simple error in the registration of a transaction?
Filing a Form to the UKIPO
How do you register transactions relating to EP applications?
UKIPO won’t deal with transactions of EP(GB)s until they become GB patents.
WHERE: EPO
WHEN: Must register before the EP application expires (i.e. before the end of the 9-month opposition window).
NB some countries will need further action at the national office, especially if the transaction is registered in the opposition period.
WHAT: Any evidence of the transfer/licence. Must be in one of the EPO languages and signed by both parties
COST: File document and pay fee (no simple form)
WHERE EFFECTIVE: All EPC contracting states.