Patent assignment and licensing

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

  • Patent assignment and licensing
  • Assignment
  • Why assign?
  • Formalities
  • Implied terms
  • Registration of an assignment
  • Rights of assignees in infringement actions
  • Key terms of an assignment
  • Licensing
  • Choosing to license
  • More...

Patent assignment and licensing

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 after 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 own name (see below).

PA 1977 and the Patents Rules 2007, SI 2007/3291 contain provisions for the assignment and licensing of patents and patent applications. Transfer of these rights is also governed by contract, competition and property laws and, for foreign patents, local laws.

This Practice Note introduces some principles in relation to assignment and licensing of

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