Transactions (assignments) Flashcards
How does registration affect ownership?
The ownership of patent and applications is not dependant on registration
What are the affects of failing to register an assignment?
There is no requirement to register an assignment to make it valid, but failure to register may have consequences in costs.
Under Section 68, where a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed before the transaction, instrument or event is registered, in proceedings for such an infringement, the court or comptroller shall NOT award him costs or expenses unless—
(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.
In what way does registration affect priority (order in which licences/assignments take over each other)?
Examples….
A assigns a patent to B on Monday; and A assigns the same patent to C on Tuesday; B registers on Wednesday; C registers on Thursday. In this case the registered assignment of B takes priority; and C has no rights in the patent at all (but might be able to sue A).
Same as before, but B registers on Thursday and C registers on Wednesday. In that case the registered assignment to C probably takes priority; although it is arguable that the nemo dat quod non habet rule applies (and C could have no interest in the patent as an assignment from A was the same as an assignment from another other person who has no rights).
A grants B an exclusive licence on Monday; B does not register; A assign the patent to C; C registers; C is entitled over B and can sue for B for infringement (should B start using the invention).
A settles a trust of the entire patent property in B’s favour; A subsequently settles a trust for the right to import in C’s favour; B’s interest prevails as neither interest can be registered and so the first in time has effect (but if A assigned the patent to C, who was a bona fida purchaser for value, then C takes in preference to B; despite it not being possible to register B’s interest under the usual rules).
