Assigning patent rights to others

Out-Law Guide | 17 Aug 2018 | 3:32 pm | 1 min. read

Patent rights are property rights and as such can be assigned, mortgaged, licensed, etc… However, when assigning a patent there are strict requirements and procedures that the patentee must adhere to and follow.

This guide is based on UK law. It was last updated in August 2018.

Requirements or restrictions for assignment of intellectual property rights

An assignment of a patent or patent application is void unless it is in writing.

Post 1 January 2005, the need for assignments to be signed by both assignees and assignors was removed for assignments of UK patents. This change was effected via the Regulatory Reform (Patents) Order 2004.  Nevertheless, it is still common for both parties and not just the assignor to sign a UK patent assignment.

Assignments of EU patent applications do need to be signed by the assignee and assignor and must be in writing, under Article 72 of the European Patent Convention.

There are specific provisions which may be implied into UK patent assignments.

Under UK law set out in section 30(7) of the Patents Act 1977, patent assignments should include the right to bring proceedings for any previous infringements.

The public have a right to inspect the register of patents maintained by the Comptroller General of Patents, Designs and Trade Marks, who leads the UK's Intellectual Property Office (IPO). There is no obligation to register the assignment or licence with the IPO. That said, it is advisable to register the assignment or licence as soon as possible.

Registration gives priority to the registered rights which can defeat earlier claims of unregistered rights.  Additionally, if the patent owner fails to register the transaction within six months its rights to claim costs for litigating an infringement that occurred before registration are diminished, unless the patent owner can prove to the court it was not reasonable or practicable to register it in that period.

Procedure for  registration

It is a simple process to register a patent application or patent assignment or licence in the UK.

An application to the IPO is made using Patent Form 21 and a small fee is payable. It must include evidence establishing the transaction; however, this does not need to be a copy of the assignment itself. A redacted photocopy of the licence or assignment is sufficient.

To register a licence or assignment in the European Patent Office (EPO), the request must be in writing and accompanied by documents satisfying the EPO that the licence or assignment has been granted. A statement signed by the assignor/licensor that the assignment or licence has been granted is also sufficient.

There is no requirement for a licence, exclusive or non-exclusive, to be in writing; however, it is advisable for it to be so. This is to ensure certainty of terms, allow the parties to secure the benefits and rights of the registration and to designate the law and jurisdiction which governs the licence.