Licenses

Question 1

Can licensees bring infringement proceedings for previous acts?

Answer 1

An assignment, share or exclusive licence MAY confer the right to bring infringement proceedings for EARLIERacts.

Question 2

How is a licence registered in the UK?

Answer 2

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 3

Who can request a correction?

Answer 3

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 4

What corrections does R50 relate to?

Answer 4

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 5

What is the effective deadline to register a transaction?

Answer 5

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 6

How do you register transactions relating to EP applications?

Answer 6

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 7

How do you register transactions relating to PCT applications?

Answer 7

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 8

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

Answer 8

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.