Transactions and Licences

Question 1

What sort of property is a patent or patent application?

Answer 1

Personal property (i.e. movable intangible personal property as opposed to real property).

It and its rights vest like other personal property.

Question 2

What are the types of transactions possible with a patent or patent application?

Answer 2

Assignment, sale, licence (and sub-licences) and mortgages

Question 3

Can patents and patent applications be licenced?

Answer 3

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)

Question 4

What are the requirements for an assignment, mortgage or agreement to be valid in the UK?

Answer 4

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.

Question 5

Can licensees bring infringement proceedings for previous acts?

Answer 5

An assignment, share or exclusive licence may confer the right to bring infringement proceedings for earlier acts.

Question 6

How is a licence registered in the UK?

Answer 6

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

Question 7

Can an overseas owner of a patent or application transfer rights, assign or licence?

Answer 7

Yes, but they need a UK representative in order to do so.

Question 8

What does an assignment say about validity?

Answer 8

Normally, assignment carries no implication that the patent is valid. Any revocation actions or infringement actions will be dealt with by the assignee or exclusive licensee.

Question 9

What happens to the patents of a UK company that goes bust?

Answer 9

The patents go to the Crown. Therefore, a liquidator must assign patents to itself or another party before dissolving the company.

Question 10

Do patent assignments require consideration?

Answer 10

In principle no, but it is common and safe practice to include at least a nominal £1 consideration in an assignment.

If the assignment includes any other terms then it is likely to still fall under general contract law and therefore require a consideration to be included.

Question 11

Who is responsible for maintaining the patent register and what is recorded on the register?

Answer 11

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.

Question 12

What form is the register kept in and who has the right to inspect it?

Answer 12

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.

Question 13

What is an address for service?

Answer 13

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.

Question 14

How do you register a transaction?

Answer 14

Use PF23 (or alternatively online) and include evidence of the transaction.

NB the Comptroller can request additional evidence.

Question 15

When will a request for a copy of a document from the register be denied?

Answer 15

• It is excluded under s118 (e.g. not available before the application is published)
• Copying it would infringe copyright

Question 16

What corrections does R49 relate to?

Answer 16

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)

Question 17

What corrections does R50 relate to?

Answer 17

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.

Question 18

What is the minimum period between a document being filed and it appearing on the register?

Answer 18

14 days

Question 19

Can assignments of pending EP(GB)/PCT cases be registered at the UKIPO?

Answer 19

The UKIPO does not maintain a register for EP(GB) pending cases - transactions must be registered on the EPO register.

Question 20

What is the effective deadline to register a transaction?

Answer 20

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.

Question 21

How can you correct a simple error in the registration of a transaction?

Answer 21

Just file a new PF21 (transaction registration form).

Question 22

How do you register transactions relating to EP applications?

Answer 22

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.

Question 23

How do you register transactions relating to PCT applications?

Answer 23

The PCT does not have a formal register, but you can still notify the IB of any transactions.

WHERE: IB (NOT the receiving office)

WHEN: Before end of the international phase (i.e. 30 months from priority)

WHAT: Assignment document (signed by both parties) - can be a simplified version. Must be in one of the PCT languages)

COST: No fee

WHERE EFFECTIVE: All states

Question 24

What happens if a later transactions is registered before an earlier transaction?

Answer 24

A later transaction or event has entitlement over an earlier transaction or event if:

• the earlier transaction was not registered, or
• notification was not given to the Comptroller (if the transaction occured before publication)

and, in either case, the later transacting party did not know (good faith) about the earlier transaction.

i.e. an unregistered transaction is unenforceable against a subsequent bona fide transaction conducted in good faith by a later party.

Question 25

How can a licence of right be set up?

Answer 25

At any time after grant, the proprietor may apply on PF28 (FORM) to register that licences are available as of right.

Question 26

What happens after a request to register a licence as of right before the request is accepted?

Answer 26

The Comptroller will inform any current rights holders of the change (e.g. licensees and mortgagors) to ensure that there are no contractual obligations prohibiting licencing (and will also advertise in the OJ).

Question 27

What are the consequences of registering a licence as of right?

Answer 27

Once issued, any person is entitled to a licence on agreed terms. If no terms are agreed, it will be granted on terms of the Comptroller.

• Comptroller can exchange current licensees with licences of right
• Any infringer who accepts a licence as of right may limit their damages to 2x a retrospective licence (they do not need to admit liability)
• Renewal fee payments are halved.

Question 28

Scenario:

A patent with a licence as of right if being infringed. A licensee wants to stop the infringement.

Answer 28

A licensee as of right may (unless their licence states otherwise) request that the proprietor 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-claimaint.

NB proprietor as co-claimaint is not liable for costs/expenses unless they actively participate

Question 29

How are the terms of a licence as of right determined?

Answer 29

• Royalties can be determined by comparison with existing royalties, by accounting or by profit-sharing.
• Sub-licencing can be banned.
• Allowed to impose import/export bans outside the EEA.
• Comptroller may arbitrate reasonable terms if no agreement.

Question 30

What is the effective deadline to register a licence of right in order to halve the renewal fee?

Answer 30

Realistically need to register at least 10 days before the renewal fee is due.

Question 31

Can a proprietor cancel a licence of right? How?

Answer 31

Yes, the proprietor can apply to cancel a licence of right using PF30 (FORM) at any time.

To cancel, they must pay the balance of all of the discounted renewal fees, and any licensees need to consent to the cancellation.

Question 32

Can 3rd parties apply for cancellation of licences of right? How?

Answer 32

Any 3rd party can apply for cancellation of an entry of a licence of right registration, if they have an agreement with the proprietor that prevents it and they do so within 2 months.

Use PF2 + evidence.

If Comptroller agrees, licence of right will be cancelled and the patentee will be ordered to repay and discounted renewal fees. This will be treated as if the licence of right never existed.

Question 33

Can an application to cancel a licence of right registration be opposed?

Answer 33

Yes, must be opposed within two months (e.g. by infringers or by proprietor if a third party request cancellation).

Uses the rules for proceedings before the Comptroller.

Question 34

What rights does an exclusive licensee have under s66?

Answer 34

Exclusive licensee (not sole licensee) has the same rights as a proprietor to bring proceedings relating to an act that occurs after the date of the licence (prior rights can also be assigned in the terms).

Damages/relief take account of the exclusive licensee’s losses.

The proprietor will be made party to any infringement proceedings but won’t be liable for costs/expenses unless they take part.

NB exclusive licensees cannot act to restore a patent - advise them to notify the proprietor.

Question 35

Can licensees provide an address for service?

Answer 35

Yes, the proprietor or any person who has registered any right in or under a patent or application may provide an address for service by notifying the Comptroller.