Registration of patent licences and assignments

UK

A patent licence can be registered at the UK Intellectual Property Office and at the European Patent Office.  Such registration is not essential but has several advantages. 

Registration of patent assignments is essential in order to transfer the legal ownership in the patent.

Registration of patent licences – why is it important?

Regardless of whether the licence is exclusive or non-exclusive, registering the licence ensures that any person who subsequently acquires rights in the patent (such as a subsequent licensee, or subsequent owner if the licensor chooses to assign the patent) is made aware of the licence. 

This becomes important if the rights that are subsequently granted are inconsistent with the rights that have been previously granted.  If, for example, an earlier licence is not registered, a subsequent exclusive licence or assignment would take priority over the earlier licence and the subsequent licensee or assignee would not (provided that they did not in fact know of the earlier licence) be required to honour the earlier licence.  If, however, the earlier licence is registered, the subsequent licensee or assignee is prevented from denying knowledge of the licence (even if they did not actually check the register) and the earlier licensee can continue to exercise their rights.

additional rights What is different about exclusive licences?

In the case of an exclusive licence, the UK Patents Act 1977 grants the licensee additional rights. 

In particular, unless stated otherwise in the licence, an exclusive licensee is entitled to bring proceedings against a third party for any infringement of the licensed patents committed after the date of the licence. 

If an exclusive licensee wishes to bring such proceedings, registration of the licence has two key advantages:

  • it enables the licensee to easily establish that they are entitled to bring the proceedings because they are registered as the exclusive licensee; and
  • it ensures that, if the infringement proceedings are successful, the licensee is entitled to recover their costs and expenses from the infringer (subject to what the terms of the exclusive licence may say on this point).

An exclusive licence must be registered with the UK Intellectual Property Office within six months of the date of the licence agreement in order to protect the right of the exclusive licensee to recover their costs and expenses in any successful infringement proceedings. If the licence is not registered, the exclusive licensee loses the right to recover these costs and expenses.

Registration of patent assignments

Legal ownership of a patent belongs to the person whose name is on the patent register in respect of that patent.  Where a patent has been assigned by agreement between the parties, but that agreement has not yet been registered, legal ownership in the patent has not yet passed (although something called "beneficial ownership" of the patent will have passed).  Therefore it is essential for a patent assignment to be registered if the assignee wishes to enjoy the full benefits of legal ownership of the patent.

In addition, in the UK, if an assignment of a patent is not registered with the Intellectual Property Office within six months of the date of the assignment agreement, the assignee will lose their right to recover their costs and expenses in any successful infringement proceedings.

registered in each relevant countryFormal requirements for registration

As patents are territorial rights, any licence or assignment that covers patents in more than one country must be registered in each relevant country.  One exception to this is European patents.  Where the European Patent has not yet reached the end of its opposition period after grant, the licence or assignment can be registered with the European Patent Office and will cover the bundle of European countries designated by the patent (or patent application).  However, after expiry of the opposition period of a European patent, the licence or assignment must be registered in each of those European countries designated.  Registration requirements differ in each county.

In the UK, registration is a simple process.  To register a licence or assignment, a form must be completed and submitted to the Intellectual Property Office together with a small fee.  If the form is signed by the licensor or assignor, no further evidence of the licence or assignment is required.  Alternatively, it is sufficient for the licensee or assignee to submit a photocopy of the licence or assignment agreement (with commercially sensitive information removed if desired) as evidence that the licence or assignment has been granted.

In the European Patent Office there is no specific form for requesting the registration of a licence or assignment.  A request must be made in writing to the European Patent Office requesting the registration, and the request must be accompanied by documents satisfying the European Patent Office that the licence or assignment has been granted.  These documents may be an original or certified copy of the licence or assignment agreement.  Alternatively, it is sufficient for the request to include a statement that the licence or assignment has been granted and for the licensor or assignor to sign that request.

Austria

In Austria patent licences can be registered any time. The 6 month period allowed in the UK for exclusive licences does not apply in Austria, but the patent right, the lien and all other material rights derived from the patent shall be acquired and shall become effective against third parties solely when entered into the patent register.

While the date of acquisition of licence rights shall be governed by the provisions of civil law, against third parties license rights shall become effective only on entry onto the patent register. The rank of the registered rights is determined by the order in which the petitions for entry have been lodged with the patent office. At the same time received applications shall enjoy equal rank.

written requestFormal requirements for registration

The registration is made upon written request from one of the parties concerned or by judicial request. The request shall be accompanied by the document starting with grounds the entry is to be made either in its original or as a duly certified copy.

 

Insolvency

The registration of a licence on the patent register of the Austrian Patent Office secures licences in case of bankruptcy of the licensor. If the licensor goes bankrupt, the liquidator has to fulfill the contract without having an articulated right of pre-termination. Caution is called for if the liquidator exploits the licensed patent as part of the assets involved in the insolvency proceedings. In this case, the transferee of the patent is entitled to terminate the contract within a legal period of 24 hours without being bound to contractual time limits or dates. The licensee can protect himself against this unpleasant surprise only by registering the licence right onto the patent register.

Once, the licences are registered, the transferee is bound to the periods of time and dates agreed in the licence contract.

If you have any questions on this article or would like to propose a subject to be addressed by Synapse please contact us.

Requiments for the registration of assignments

Talitha Shkopiak



Talitha is an associate in the Intellectual Property group based our in London office.

Rainer Schultes

Rainer Schultes

"In the UK, registration is a simple process.  To register a licence or assignment, a form must be completed and submitted to the Intellectual Property Office together with a small fee."

"In Austria patent licences can be registered any time. The 6 month period allowed in the UK for exclusive licences does not apply in Austria."