Week 12

Question 1

What is module 12 about?

Answer 1

Transferability and economic value of patents. Assignment of the patent. License agreements. Diversity of the license agreements. Sub-
licenses

Question 2

What is a license agreement?

Answer 2

In a license agreement, the patent owner gives another entity (the “ licensee”) permission to use the patented technology, while the patent owner retains ownership.

Question 3

What it is the patent assignment?

Answer 3

In a patent assignment, the original owner permanently transfers its ownership to another entity.

Question 4

What it is the assignment?

Answer 4

Transforming to one another party the ownership.

Question 5

1

Answer 5

Assignor (former) IPR owner&raquo_space;» Assignee (current) IPR owner

Assignment is definitive. Former patent holder loses control over his invention. The assignee jumps into his position, in principle retaining all his rights and duties.

Question 6

Should be assignment in writing

Answer 6

In France and Poland assignment needs to be in writing to be a valid. In the UK the necessity of the contract done in written form also exists however it’s sufficient if only to assign or will assign provided that they are saying he is also assuming the obligations under the contract. The assignment of German patent doesn’t require a written form and can be based on applying agreement.

Should be in writing for clearility and evidential purposes .

Question 7

European Patent

Answer 7

They are more modest but still require form to be in writing.
Pursuant to the articles 71 and 72 of EPC referred to Patents.

Question 8

1

Answer 8

Article 72 of EPC

An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.

Question 9

1

Answer 9

Lack of the change. registration is not required to be valid. but recommended to be register for the legitimating effect.

In US assignment should be void. 3 days of the prior day to such purchases.

Question 10

1

Answer 10

1) the right should exist before the transfer

2) the assignee should be aware of the all third parties right affecting patent (every license etc)

Question 11

Patent assignment in order to be valid must be:

Answer 11

X done in writing
X recorded in patent registry
X free of charge
V none of the answers is correct

Question 12

The definitive transfer could take place as to:

Answer 12

patents, patent applications, right to invention and priority

Question 13

What are the formalities which are established by patent statutes?

Answer 13

1

Question 14

What is proprietary basis?

Answer 14

1

Question 15

The conditions for patent assignment are regulated in

Answer 15

National laws

Question 16

Licensee is the person who

Answer 16

usually is obliged to pay royalties

Question 17

Under most national regulations the licensee may grant further licence (sublicence)

Answer 17

only with the prior consent of the licensor

Question 18

A patent licence authorizing only one entrepreneur to sell the protected product without the specification of the time

Answer 18

exclusive, full licence

Question 19

The sole licence means:

Answer 19

sort of exclusive licence with the possibility for patent holder to exploit the invention

Question 20

1

Answer 20

• The licensor is sole owner of IPR and has a right and authority to grant a licence,
• The subject matter by third parties rights,
• Fees for IP maintenance have been timely paid
• the subject matter of the license is not a subject of other licence
• licensed IPR is valid and is not subject of invalidation (revocation) proceedings

Question 21

1

Answer 21

• At the end of a fixed term.
  In order to avoid any doubts, the date of expiration should be specified, or the duration of the agreement (e.g. 3 years)
• In case of expiration of invalidation of the licensed IPR
• If one of the party terminates agreement before the agreement has expired

Question 22

The licensor can by obliged, among others, to do following:

Answer 22

• provide licensee with all relevant documentation (drawings, instructions) and know- how related the licensed technology,
• provide technical assistance,
• defend IP rights against validity challenges of third parties
• maintain the licensed IPR for the duration of license agreement
• defend IP right agains infringement of third parties,
• inform licensee of all improvements to the licensed product and to offer licensee on royalty-free or payable basis the possibility to use all improvements made to the licensed technology or product

Question 23

Licensee usually is obliged to

Answer 23

• take all actions necessary to successfully manufacture and market the licensed product in the territory covered by licensed,
• use all reasonable efforts to achieve successful results in sales of licensed products,
• inform licensor about any third parties actions threatening or infringing the licensed IPR
• Keep clear financial records regarding sales of the licensed products and to provide access to this information under Licensor request

Question 24

There are various models of royalties used:

Answer 24

Lump sum

• usually paid at the beginning of the license period (initial down payment)
• is often used by exclusive licenses due to the similarity to assignment;
• constitutes less risk for the licensor while it does not depend on profits generated by the licensed IPR.

Recurrent (periodic) payments

Basically there are payments per unit or percentage license. “Per unit” - means a fixed amount for each sale of a licence subject by the license.

Combination

A mixed formula providing some benefits of both aforementioned methods. Usually the specified little sum is being paid at the beginning of the licence period and when the contract is performed licensee is obliged to pay periodically.

Question 25

1

Answer 25

Legal Factors

• exclusivity
• advances
• transferability
• market scope
• territorial scope
• duration

Business factors

• Importance
• Uniqueness
• Stage of development
• Risk
• Profit margins

Question 26

What it is a license?

Answer 26

License is a permission granted by the holder of the right (licensor) to a person who wants to use an invention (licensee) within the territory of protection

From the legal point of view licensing agreement is a contract that subject matter is patent for which the owner of patent granted the other party rights to use.

Question 27

Who is Licensor?

Answer 27

• A party of a licensing agreement granting the consent to use the IPR

Question 28

Who is Licensee?

Answer 28

• A party of a licensing agreement getting the consent for using the IPR

Question 29

What it is licensing agreement?

Answer 29

• an agreement under which a patent holder authorized third person to use his invention on the agreed terms and conditions, for a defined purpose, in a defined territory and for an agreed period of time. After granting the license the right holder retains his proprietary right, however, this right is burden (limited) in the sense that person of right holder is obliged to tolerate the licensee’ activity.

Question 30

What it is Non-exclusive license ?

Answer 30

Non-exclusive license means that the licensor can itself operate under licensed right and can also grant as many further licenses as he wishes.

None exclusiveness here means that they’re on the same territory the holder of the patent will be able to grant further licenses and to use the invention himself.

Question 31

What does it mean Exclusive license?

Answer 31

it means that the licensee alone can operate under licensed right (please note that even the licensor is excluded for doing so)

Question 32

Is it possible to grant more than one exclusive license ?

Answer 32

yes provided that the license that these licenses will differ in is in their scope for instance one entrepreneur may receive the exclusive license to manufacture patented products and the other exclusive license to sell them.

Puts him in the position of the patent holder.

Question 33

1

Answer 33

Disadvantage of the exclusive license is that license or takes a high risk to successful exploitation based on the activities of one licensee only.

Question 34

What it is the sole license ?

Answer 34

It means the licensor will grant no further licenses so that no-one other than the licensee and the licensor can operate under the licensed patent.

In fact the sole license could be called as it weak an exclusive license. Granting such a license doesn’t exclude using that invention by the patentee himself. Does one such license has been granted on the territory of protection the holder of the right often becomes the licenses competitor.

Question 35

What it is the full license ?

Answer 35

The full license agreement is concluded, when in the licensing agreement there is no limitation.

Question 36

What it is the limited license?

Answer 36

It means that the rights of the licensee has been limited in the agreement in regard to the scope of the use, the territory, time

Question 37

What are two main kinds of limited license are:

Answer 37

• Production license which authorizes a licensee only to produce products, but without the right to trade them.
• Commercial license which authorizes a license only to trade with the products, but without the right to produce them

Question 38

What it is the active license?

Answer 38

Contracts which require some activity on the part of the licensors are called active licenses.

Question 39

What it is the passive license?

Answer 39

Licenses containing only authorization and releasing the licensor from any other obligation - passive licenses are very rare.

Question 40

1

Answer 40

In sublicense agreement the role of licensee is reversed: the licensee of the primary agreement becomes the licensor in the sub licensing agreement granting rights to the sublicensee. The scope of the sublicense cannot exceed the scope of the license agreement.

Question 41

Article 73 of EPC

Answer 41

A European Patent Application may be licensed in whole or in part for the whole or part of the territories of the designated Contracting States.