Week 12 Flashcards
Transferability and economic value of patents. Assignment of the patent. License agreements. Diversity of the license agreements. Sub- licenses
What is module 12 about?
Transferability and economic value of patents. Assignment of the patent. License agreements. Diversity of the license agreements. Sub-
licenses
What is a license agreement?
In a license agreement, the patent owner gives another entity (the “ licensee”) permission to use the patented technology, while the patent owner retains ownership.
What it is the patent assignment?
In a patent assignment, the original owner permanently transfers its ownership to another entity.
What it is the assignment?
Transforming to one another party the ownership.
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Assignor (former) IPR owner»_space;» Assignee (current) IPR owner
Assignment is definitive. Former patent holder loses control over his invention. The assignee jumps into his position, in principle retaining all his rights and duties.
Should be assignment in writing
In France and Poland assignment needs to be in writing to be a valid. In the UK the necessity of the contract done in written form also exists however it’s sufficient if only to assign or will assign provided that they are saying he is also assuming the obligations under the contract. The assignment of German patent doesn’t require a written form and can be based on applying agreement.
Should be in writing for clearility and evidential purposes .
European Patent
They are more modest but still require form to be in writing.
Pursuant to the articles 71 and 72 of EPC referred to Patents.
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Article 72 of EPC
An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.
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Lack of the change. registration is not required to be valid. but recommended to be register for the legitimating effect.
In US assignment should be void. 3 days of the prior day to such purchases.
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1) the right should exist before the transfer
2) the assignee should be aware of the all third parties right affecting patent (every license etc)
Patent assignment in order to be valid must be:
X done in writing
X recorded in patent registry
X free of charge
V none of the answers is correct
The definitive transfer could take place as to:
patents, patent applications, right to invention and priority
What are the formalities which are established by patent statutes?
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What is proprietary basis?
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The conditions for patent assignment are regulated in
National laws
Licensee is the person who
usually is obliged to pay royalties
Under most national regulations the licensee may grant further licence (sublicence)
only with the prior consent of the licensor
A patent licence authorizing only one entrepreneur to sell the protected product without the specification of the time
exclusive, full licence
The sole licence means:
sort of exclusive licence with the possibility for patent holder to exploit the invention
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- The licensor is sole owner of IPR and has a right and authority to grant a licence,
- The subject matter by third parties rights,
- Fees for IP maintenance have been timely paid
- the subject matter of the license is not a subject of other licence
- licensed IPR is valid and is not subject of invalidation (revocation) proceedings
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- At the end of a fixed term.
In order to avoid any doubts, the date of expiration should be specified, or the duration of the agreement (e.g. 3 years) - In case of expiration of invalidation of the licensed IPR
- If one of the party terminates agreement before the agreement has expired
The licensor can by obliged, among others, to do following:
- provide licensee with all relevant documentation (drawings, instructions) and know- how related the licensed technology,
- provide technical assistance,
- defend IP rights against validity challenges of third parties
- maintain the licensed IPR for the duration of license agreement
- defend IP right agains infringement of third parties,
- inform licensee of all improvements to the licensed product and to offer licensee on royalty-free or payable basis the possibility to use all improvements made to the licensed technology or product
Licensee usually is obliged to
- take all actions necessary to successfully manufacture and market the licensed product in the territory covered by licensed,
- use all reasonable efforts to achieve successful results in sales of licensed products,
- inform licensor about any third parties actions threatening or infringing the licensed IPR
- Keep clear financial records regarding sales of the licensed products and to provide access to this information under Licensor request
There are various models of royalties used:
Lump sum
- usually paid at the beginning of the license period (initial down payment)
- is often used by exclusive licenses due to the similarity to assignment;
- constitutes less risk for the licensor while it does not depend on profits generated by the licensed IPR.
Recurrent (periodic) payments
Basically there are payments per unit or percentage license. “Per unit” - means a fixed amount for each sale of a licence subject by the license.
Combination
A mixed formula providing some benefits of both aforementioned methods. Usually the specified little sum is being paid at the beginning of the licence period and when the contract is performed licensee is obliged to pay periodically.
