Briefing
Registration of Patent Assignments and Licences
If you have taken a licence or an assignment of a UK patent, you should consider registering the licence or assignment at the UK Patent Office. Although there is no legal requirement to do so, there are good reasons why you should register your interests promptly following completion of these transactions. This briefing note sets out these reasons and tells you how to register your rights. You should register your assignment or exclusive licence within six months (or if beyond six months, as soon as it is practicable to do so), otherwise you will lose the right to financial relief in respect of infringing acts committed between the date of acquiring the assignment or exclusive licence and the date of registration. Provided that you do apply for registration within the six months allowed, you may claim for damages from the date of the licence or assignment (even if this is earlier than the date on which you applied to register it). A further benefit of registration, in the context of assignments, is that it provides evidence that you are the legal owner of the patent and that you are entitled to bring actions for infringement of the patent or to further assign or license it.
1.
Reasons to Register
i. To protect your newly acquired rights against third parties Until you register your patent assignment or licence, it is possible for third parties who do not know of your rights to acquire conflicting interests in the patent, without being bound by your earlier, unregistered rights. In other words, even though you have taken, say, an exclusive licence of a patent, if you have not registered that licence, the patent owner could assign the patent to someone else and that person would not be bound by your licence, unless they knew of its existence. You should therefore register your patent assignment or licence as a matter of course, because it gives notice of your rights to others. Anyone else who later acquires any rights in the patent will therefore acquire them subject to your registered interest. For the purpose of giving such notice to others, the application for registration is sufficient.Therefore, your rights are protected from the date on which you applied to the Patent Office to register them and any delay on the part of the Patent Office in processing your application will not prejudice you. ii. To ensure you can obtain full financial relief for any infringement Either the patent owner or an exclusive licensee can sue for infringement of the patent and claim damages for any loss they have suffered as a result. However, the right to claim damages for infringement can be lost or reduced by delay in, or failure to, register your assignment or exclusive licence.
iii.
Administrative benefits
There are also administrative reasons for registering a patent assignment or licence (but particularly an assignment) and ensuring that your contact details are accurately recorded on the register and are updated when necessary. Clearly the Patent Office will send notice of matters affecting the patent, for example, renewal notices or applications for revocation to the person named on the register (or their appointed patent agent) as being the owner of the patent. Failure to register your assignment may mean that such important matters are not brought to your attention.
2.
How to Register
To register a patent licence or assignment you should complete and submit form 21/77 (available on the Patent Office website: www.patent.gov.uk) to the UK Patent Office. This form applies to the registration of both patent assignments and licences, and where appropriate, can be used in relation to more than one patent forming part of the same broader transaction. No fee is payable for registering these transactions.
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If form 21/77 is signed by the licensor or assignor it is generally not necessary to supply to the Patent Office a copy of the licence or assignment itself. This is preferable because the licence or assignment may contain confidential information and once this is submitted to the Patent Office, it will generally become part of the public record (and open to public inspection). It is therefore best practice to ensure that provision is made in the licence or assignment document either for the licensor or assignor to sign the form at the same time that the licence or assignment is signed or to oblige the licensor or assignor to sign the form later at your request. Alternatively, the parties could sign a short-form licence or assignment in addition to the full licence or assignment document. This agreement would contain the essential elements of the transaction (name and address of the parties, the signature of the licensor or assignor, and the relevant patent number(s)) but would not contain other, confidential details. Again, this could be dealt with at the same time as the full licence or assignment is signed or later (providing that there is a provision to oblige the licensor or assignor to sign further documents on request).
3.
Foreign Patents
This briefing note deals only with the registration of licences and assignments of UK patents. If the rights licensed or assigned include foreign patents and patent applications then you will need to also consider the registration of the licence or assignment at other, relevant, national patent offices. The details of these procedures are outside the scope of this briefing note. Note:The law and practice in this note is stated as at March 2006.
Further Information
For more information please contact: Jim Kinnier Wilson in Oxford on +44 (0)1865 813637 or by email jim.kinnierwilson@manches.com This briefing note is intended merely to provide a summary of the law in this area and is not a comprehensive guide. It is not intended to provide legal advice for specific cases.
Aldwych House 81 Aldwych London WC2B 4RP Tel +44 (0)20 7404 4433 Fax +44 (0)20 7430 1133 9400 Garsington Road Oxford Business Park Oxford OX4 2HN Tel +44 (0)1865 722106 Fax +44 (0)1865 201012
www.manches.com