Registration of Transactions
Written by Ben Evans on 07 January 2011« Return to Reading Room
Where a patent is the subject of an assignmment or licence then an assignee or licensee of the patent can register the transaction with the UKIPO.
Registration of such transaction is no compulsory (s32(2)(b)) however it is strongly rcommended fo two reasons:
1) A third party acquirer of property rightsin the patent is not bond b the transaction unless thethird party has knowledge of the trasaction (s33), registration of the assignmet or licence puts third partes on notice of te registered interest;
2) In the case of an assignmet or exclusive licence the assignee or licensee can only be awarded costs or expenses in courtor IPO proeedings relating to infringemet that occurred before registration (s68) if the transaction is registerd within 6 moths of its completion, or (where registration is not feasible wihin tht 6 month period) as soon as practicable thereafter).
As the register is publc the parties will often want to keep the commercial terms of the licence confidential by requiring each party to execute a short-form licence (recordal licence) that can be submitted to the relevant patent office for registration.
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