Transferring patent rights
Transferring patent rights

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Transferring patent rights
  • Assignment
  • Key terms of an assignment
  • Licensing
  • Compulsory licences
  • Licences of right
  • Fair, reasonable and non-discriminatory (FRAND) licences
  • Key terms in a standard licence
  • Other issues

As of exit day (31 January 2020) the UK is no longer an EU Member State. However, in accordance with the Withdrawal Agreement, the UK has entered an implementation period, during which it continues to be subject to EU law. This has an impact on this Practice Note. For further guidance, see Practice Note: Brexit—IP rights.

The Patents Act 1977 (PA 1977) treats patents and patent applications as personal property rights. Rights in inventions, patents and patent applications can be transferred by various methods, including assignment or licensing; they can also be used as security to raise funds. Transfer of rights can take place at any stage from prior to the making of the invention to the expiry of the patent.

Any dealing with a patent should also take account of any non-patented know-how related to the invention, as there may be considerable value in such technical knowledge.

A licence granted under a patent is fundamentally different to an assignment of a patent. An assignee stands in the place of the assignor after the assignment. A licensee, on the other hand, obtains an interest in the patent which allows him to do certain otherwise prohibited acts but which in general gives him no rights as against third parties. The exception to this is the exclusive licensee, who may sue for infringement in his