uk patent assignments

Assignments overview and pitfalls to beware!

03 December 2012

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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The Basics Of Patent Law - Assignment And Licensing

Contributor.

Gowling WLG's intellectual property experts explain assignment and licensing in a series of articles titled 'The basics of patent law'.

The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure ; Initiating proceedings ; Infringement and related actions ; Revocation, non-infringement and clearing the way ; Trial, appeal and settlement ; Remedies and costs ; Assignment and Licensing and the Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017 , for which Gordon Harris and Ailsa Carter wrote the UK chapter .

Introduction

Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30(2)) and licences and sub-licences may be granted under any patent or any patent application (PA s.30(4)).

The key difference between an assignment and a licence is that an assignment is a transfer of ownership and title, whereas a licence is a contractual right to do something that would otherwise be an infringement of the relevant patent rights. Following an assignment, the assignor generally has no further rights in relation to the relevant patent rights. On the granting of a licence, the licensor retains ownership of the licensed rights and generally has some continuing obligations and rights in relation to them (as set out in the relevant licence).

Formalities

Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC).

There is no particular statutory provision regarding the form of a licence or sub-licence (exclusive or otherwise). However, in view of the advisability of registration (discussed below) and legal certainty, it is sensible that any licence be in writing. In addition, normal contractual formalities apply, such as intention to create legal relations, consideration and certainty of terms, etc.

Registration

Registration (with the UKIPO) of an assignment or licence is not mandatory. However, if the registered proprietor or licensor enters into a later, inconsistent transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33). Registration is therefore advisable. Failure to register an assignment or an exclusive licence within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).

The procedure for registration is governed by the Patents Rules 2007. The application should be made on the appropriate form, should include evidence establishing the transaction, instrument or event, and should be signed by or on behalf of the assignor or licensor. Documents containing an agreement should be complete and of such a nature that they could be enforced. A translation must be supplied for any documentary evidence not in English.

In practice (particularly in the context of a larger corporate transaction in which many different asset classes are being transferred, not just intellectual property), parties sometimes agree short form documents evidencing the transfer of the relevant patent rights and will submit these for registration. This can enable parties to save submitting full documents for the whole transaction, which may include sensitive commercial information that is not relevant to the transfer of the patent rights themselves.

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

On a basic level an exclusive licence means that no other person or company can exploit the rights under the patent and this means the licensor is also excluded from exploiting such rights. Exclusivity may be total or divided up by reference to, for example, territory, field of technology, channel, or product type. The extent of exclusivity generally goes to the value of the rights being licensed and will feed into the agreed financials. It is worth noting that the term "exclusive licence" does not have a statutory definition under English law, so it is very important to define the contractual scope of exclusivity in the relevant licence agreement.

In the event a licensor wants to retain the ability to exploit the rights in some way (for example an academic licensor may want the ability to continue research activities) then appropriate carve outs from the exclusivity should be expressly stated in the licence agreement.

A non-exclusive licensee has the right to exploit rights within the patent as determined by the licence agreement. However, the licensor may also exploit such rights as well as granting multiple other licences to third parties (which may include competitors of the original licensee).

Much less common is a sole licence, by which the patent proprietor agrees not to grant any other licences but gives the licensee the right to use the technology and may also still operate the licenced technology itself.

Compulsory licences

A compulsory licence provides for an individual or company to seek a licence to use another's patent rights without seeking the proprietor's consent. Compulsory licences under patents may be granted in circumstances where there has been an abuse of monopoly rights, but are very rarely granted in the UK.

An application for a compulsory licence can be made by any person (even a current licensee of the patent) to the Comptroller of Patents at any time after three years from the date of grant of the patent. In respect of a patent whose proprietor is a national of, or is domiciled in, or which has a real and effective industrial or commercial establishment in, a country which is a member of the World Trade Organisation, the applicant must establish one of the three specified grounds for relief. If satisfied, the Comptroller has discretion as to whether a licence is granted and if so upon what terms. The grounds are:

• demand for a patented product in the UK is not being met on reasonable terms;
• the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
• the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
• by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

The terms of the licence shall be decided by the Comptroller but are subject to certain restrictions on what type of licence can be granted, namely the licence: cannot be exclusive; can only be assigned to someone who has been assigned the part of the applicant's business that enjoys use of the patented invention; will be for supply to the UK market; will include conditions allowing the patentee to adequate remuneration; and must be limited in scope and duration to the purpose for which the licence is granted.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

A non-exclusive licensee does not have any right under statute to bring proceedings in its own name. However, this could be negotiated into a licence agreement, though it may be difficult for a licensor to agree this point if it has multiple non-exclusive licensees.

Effect of non-registration on infringement proceedings

There is no requirement that a licence must be registered before proceedings can be commenced by an exclusive licensee. However, non-registration can affect a licensee's ability to recover its costs in relation to such proceedings.

Implied terms

Established rules of construction apply to assignment and licence agreements. Parties should ensure that important terms are included as express terms. There is no implied warranty that any assigned or licensed patent will be valid, or that an assignee or licensee will work the invention (for example, that they will exploit the rights and manufacture products). In certain very limited circumstances a court will order 'rectification' of an assignment or licence agreement, namely a court will order a change in the assignment or licence agreement to reflect what the agreement ought to have said in the first place. Regardless of this, all key terms should be included expressly in all assignment and licence agreements.

Termination of licences

Except where there is express contractual provision or where a licence has been wrongly terminated and damages sought, under English law there is no compensation payable to licensees on termination of a licencing agreement. The licence agreement should be clear as to what circumstances may give rise to termination, for example the non-payment of royalties, material breach or insolvency. The agreement should also make clear what happens in the event of termination in relation to, for example, existing stock of licensed products or work in progress.

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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The basics of patent law - assignment and licensing

The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure ; Initiating proceedings ; Infringement and related actions ; Revocation, non-infringement and clearing the way ; Trial, appeal and settlement ; Remedies and costs ; Assignment and Licensing and the Unified Patent Court and Unitary Patent system .

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Introduction

Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30(2)) and licences and sub-licences may be granted under any patent or any patent application (PA s.30(4)).

The key difference between an assignment and a licence is that an assignment is a transfer of ownership and title, whereas a licence is a contractual right to do something that would otherwise be an infringement of the relevant patent rights. Following an assignment, the assignor generally has no further rights in relation to the relevant patent rights. On the granting of a licence, the licensor retains ownership of the licensed rights and generally has some continuing obligations and rights in relation to them (as set out in the relevant licence).

Formalities

Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC).

There is no particular statutory provision regarding the form of a licence or sub-licence (exclusive or otherwise). However, in view of the advisability of registration (discussed below) and legal certainty, it is sensible that any licence be in writing. In addition, normal contractual formalities apply, such as intention to create legal relations, consideration and certainty of terms, etc.

Registration

Registration (with the UKIPO) of an assignment or licence is not mandatory. However, if the registered proprietor or licensor enters into a later, inconsistent transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33). Registration is therefore advisable. Failure to register an assignment or an exclusive licence within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).

The procedure for registration is governed by the Patents Rules 2007. The application should be made on the appropriate form, should include evidence establishing the transaction, instrument or event, and should be signed by or on behalf of the assignor or licensor. Documents containing an agreement should be complete and of such a nature that they could be enforced. A translation must be supplied for any documentary evidence not in English.

In practice (particularly in the context of a larger corporate transaction in which many different asset classes are being transferred, not just intellectual property), parties sometimes agree short form documents evidencing the transfer of the relevant patent rights and will submit these for registration. This can enable parties to save submitting full documents for the whole transaction, which may include sensitive commercial information that is not relevant to the transfer of the patent rights themselves.

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

On a basic level an exclusive licence means that no other person or company can exploit the rights under the patent and this means the licensor is also excluded from exploiting such rights. Exclusivity may be total or divided up by reference to, for example, territory, field of technology, channel, or product type. The extent of exclusivity generally goes to the value of the rights being licensed and will feed into the agreed financials. It is worth noting that the term "exclusive licence" does not have a statutory definition under English law, so it is very important to define the contractual scope of exclusivity in the relevant licence agreement.

In the event a licensor wants to retain the ability to exploit the rights in some way (for example an academic licensor may want the ability to continue research activities) then appropriate carve outs from the exclusivity should be expressly stated in the licence agreement.

A non-exclusive licensee has the right to exploit rights within the patent as determined by the licence agreement. However, the licensor may also exploit such rights as well as granting multiple other licences to third parties (which may include competitors of the original licensee).

Much less common is a sole licence, by which the patent proprietor agrees not to grant any other licences but gives the licensee the right to use the technology and may also still operate the licenced technology itself.

Compulsory licences

A compulsory licence provides for an individual or company to seek a licence to use another's patent rights without seeking the proprietor's consent. Compulsory licences under patents may be granted in circumstances where there has been an abuse of monopoly rights, but are very rarely granted in the UK.

An application for a compulsory licence can be made by any person (even a current licensee of the patent) to the Comptroller of Patents at any time after three years from the date of grant of the patent. In respect of a patent whose proprietor is a national of, or is domiciled in, or which has a real and effective industrial or commercial establishment in, a country which is a member of the World Trade Organisation, the applicant must establish one of the three specified grounds for relief. If satisfied, the Comptroller has discretion as to whether a licence is granted and if so upon what terms. The grounds are:

• demand for a patented product in the UK is not being met on reasonable terms;
• the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
• the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
• by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

The terms of the licence shall be decided by the Comptroller but are subject to certain restrictions on what type of licence can be granted, namely the licence: cannot be exclusive; can only be assigned to someone who has been assigned the part of the applicant's business that enjoys use of the patented invention; will be for supply to the UK market; will include conditions allowing the patentee to adequate remuneration; and must be limited in scope and duration to the purpose for which the licence is granted.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect to infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

A non-exclusive licensee does not have any right under statute to bring proceedings in its own name. However, this could be negotiated into a licence agreement, though it may be difficult for a licensor to agree this point if it has multiple non-exclusive licensees.

Effect of non-registration on infringement proceedings

There is no requirement that a licence must be registered before proceedings can be commenced by an exclusive licensee. However, non-registration can affect a licensee's ability to recover its costs in relation to such proceedings.

Implied terms

Established rules of construction apply to assignment and licence agreements. Parties should ensure that important terms are included as express terms. There is no implied warranty that any assigned or licensed patent will be valid, or that an assignee or licensee will work the invention (for example, that they will exploit the rights and manufacture products). In certain very limited circumstances a court will order 'rectification' of an assignment or licence agreement, namely a court will order a change in the assignment or licence agreement to reflect what the agreement ought to have said in the first place. Regardless of this, all key terms should be included expressly in all assignment and licence agreements.

Termination of licences

Except where there is express contractual provision or where a licence has been wrongly terminated and damages sought, under English law there is no compensation payable to licensees on termination of a licencing agreement. The licence agreement should be clear as to what circumstances may give rise to termination, for example the non-payment of royalties, material breach or insolvency. The agreement should also make clear what happens in the event of termination in relation to, for example, existing stock of licensed products or work in progress.

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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• Recordal of assignments UKIPO EUIPO and EPO Trade Marks

Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

An International Guide to Patent Case Management for Judges

9.7.1 injunctive relief.

Often, the principal reason why a patentee will have commenced infringement proceedings will have been to seek an injunction against the defendant to prevent it from infringing the patent. The courts of England and Wales have the power to grant injunctions “in all cases in which it appears to the court to be just and convenient to do so.” 142

The exact wording and scope of an injunction is usually considered by the trial judge at the consequentials hearing. The normal form of the injunction is one in “general form,” restraining the defendant(s) from infringing the patent, as opposed to one limited to restraining the defendant(s) from performing the specific acts found by the court at trial to infringe the patent.

The granting of a general form injunction is a matter of discretion. The important issue of whether and in what terms to grant an injunction was considered by Mr Justice Birss (as he then was) in Evalve Inc. v. Edwards Lifesciences Ltd , 143 who identified the following general principles:

i) A general injunction to restrain future infringements is the normal remedy for the patentee. ii) The burden is on the defendant to give reasons why such an injunction should not be granted. iii) All the circumstances should be considered. The public interest, such as the impact on third parties, is a relevant consideration. […] iv) In a proper case, the public interest may justify refusal of or carve out from injunction, and an award of damages in lieu. […] v) The starting point of any consideration of the public interest in relation to a remedy after a patent trial is that the patent system as a whole is already criss-crossed with provisions which strike balances between different public interests. vi) The availability of an exclusionary injunction is an important manifestation of the monopolistic nature of a patent right. While monopolies in general are against the public interest, once a patent has been found valid and infringed, the patent monopoly is something which it is in the public interest to protect by an injunction in order to further the purposes of the system as a whole, such as to promote investment in innovation. vii) Therefore when […] various public interests are engaged and pull in different directions, one should have in mind that the legislator is better equipped than the courts to examine these issues and draw the appropriate broad balance. The jurisdiction to refuse or qualify a patent injunction on public interest grounds is not there to redraw the broad balance of public interests set by Parliament in the patent system. The power should be used sparingly and in limited circumstances. 144

The courts have, in an appropriate case, been prepared to grant an injunction that extends beyond the lifetime of the patent in order to deprive the defendant of the “springboard” from which it had benefited by infringement during the patent’s lifetime. 145

The courts also have the ability to tailor injunctive relief to the nature of the case. For example, in cases where the patentee is under an obligation to grant licenses on FRAND terms, the injunction may be expressed to lapse if the defendant enters into a license on the terms that the court has held to be FRAND. 146 Conversely, because the grant of an injunction is an exercise of the court’s discretion, the courts have, in appropriate cases, been prepared to refuse or limit a final injunction following a finding of infringement and substitute an award of damages in lieu of the injunction.

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Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

• Transfer ownership to another entity or party through an "assignment;" or
• Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

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