UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights An assignment of a UK patent or patent applica- tion must be in writing and signed by the assign- or – in practice, it is usual for both parties to sign the assignment. No approval of the UK IPO is required to effect an assignment of a patent or a patent applica- tion. There is no requirement to register an assign- ment at the UK IPO. However, it is recommend- ed to do so, as failing to register an assignment can have significant consequences. • Third parties can acquire interests in a patent or patent application without being bound by an earlier unregistered assignment (unless they otherwise knew of the assignment). • In addition, an assignee who does not reg- ister an assignment within six months of the effective date of the assignment is not able to claim costs or expenses in proceedings for infringement of that patent where that infringement took place prior to registration. 10.2 Procedure for Assigning an Intellectual Property Right A UK patent or patent application can be assigned by contract, and the assignment may or may not be registered at the UK IPO (see 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights ). Registration of an assignment requires completion of Patents Form 21, with the completed form to be sent to the UK IPO. Patents Form 21 can be used for more than one patent or patent application,
provided that each relates to the same assign- ment transaction. If only the assignor signs the form, the UK IPO will usually consider the form to be sufficient evi- dence to proceed to register the assignment and will not usually require any additional evidence. If the assignor does not sign the form, documen- tary evidence of the assignment (for example, a copy of the assignment document) must be filed with the form. There is a GBP50 fee for fil- ing the form. 10.3 Requirements or Restrictions to License an Intellectual Property Right There is no formal requirement for a licence to be valid in writing, but it is advisable to do so in order to ensure clarity regarding the terms of the licence. As with assignments, there is no requirement to register a licence at the UK IPO. However, it is recommended to do so, as failing to register a licence can have significant consequences. • Third parties can acquire interests in a patent or patent application without being bound by an earlier unregistered licence (unless they otherwise knew of the licence). • In addition, an exclusive licensee who does not register a licence within six months of the licence’s effective date cannot claim costs or expenses in proceedings for infringement of that patent where that infringement took place prior to registration. • A failure to register an exclusive licence can give rise to difficulties establishing that the exclusive licensee is entitled to bring pro- ceedings against a third party in their own right.
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