CLIP
IP in Practice Consolidation
Formalities for IP assignments
• Requirement for writing
o An assignment of IP must be in writing and signed, showing clear intention to assign.
o Sections expressly addressing assignment formalities:
▪ S.24(3) TMA
▪ S.90(3) CDPA (copyright)
▪ S.222(3) CDPA (UDR)
▪ S.30(6) PA
o A purported assignment which does not comply with the required formalities will not effect transfer of
legal title to the asset.
▪ It will take effect in equity only – an equitable assignee has a right to require the assignor to
execute a legal assignment
o It is possible to assign IP rights which do not yet exist
• Registration of assignments
o Once an assignment of a registered right has been executed, the assignment itself must be
registered so that the new owner appears on the register.
o The effect of failing to register an assignment is that it will not be effective against another person
acquiring a conflicting interest in the right, unless that person actually knows about the earlier
(unregistered) assignment
o In respect of registered trade marks and patents, an unregistered assignee may not claim costs in
proceedings in respect of infringements which occur during the period between the assignment and
its eventual registration (subject to a six-month grace period) s.25(4) TMA and s.68 PA
o A registered design can only be enforced by its registered proprietor
Licensing IP
• Licensee’s rights are personal against the licensor, not property rights
• Registration of licences
o A licence of a registered right itself should be registered.
▪ This is particularly important for the licensee in case the licensor assigns the underlying
registered right to a third party
o Effect of failing to register a trade mark licence or patent licence is that the licence will not be effective
against a person who acquires a conflicting right in the trade mark or patent and does not know about
the grant of the licence.
Key licence terms
• Subject matter of licence
o Specify clearly what IP, belonging to the licensor, the licensee is permitted to use.
• Scope of licence
o The scope of a licence is usually limited to specific acts
o It may be further limited to allowing the licensee to do such acts only for specified purposes or in a
specific geographic territory
o It is common for a licence to include an express undertaking on the part of the licensee not to use the
subject matter in any way except as specified in the licence.
• Restrictions on the licensor’s use of the IP
o An exclusive licence gives the licensee permission to use the relevant IP to the exclusion of all other
persons, including the licensor itself.
o Under a sole licence, the licensor agreed not to grant the same permission to any third party, but the
licensor retains the right to do the acts permitted to the licensee.
o A non-exclusive licence allows the licence to third parties
• Integrity of the underlying IP rights
o Licensee will seek a warranty from the licensor that the subject matter of the licence belongs to the
licensor
o Licensee will also seek protection against the risk that the licensor allows it rights to lapse.
o Licensor is likely to accept an obligation to preserve the IP, in particular paying the renewal fees
o Common in exclusive licences to provide that, in the event that the licensor no longer requires the IP
itself- ie let the right lapse, it must offer an assignment to the licensee.
• Manner of use
o Licensor also likely to require control over how the licensee exercises such rights.
o Example – inclusion of quality control provisions
• Third party rights
o Licensee will want a warranty from the licensor to the effect that the licensee’s use of the IP (as
permitted) will not create any liability to any other person for infringement of an IP right.
▪ Licensors often resist giving such warranties because of the difficulties of conducting
searches and assessing the extent of the risk.
IP in Practice Consolidation
Formalities for IP assignments
• Requirement for writing
o An assignment of IP must be in writing and signed, showing clear intention to assign.
o Sections expressly addressing assignment formalities:
▪ S.24(3) TMA
▪ S.90(3) CDPA (copyright)
▪ S.222(3) CDPA (UDR)
▪ S.30(6) PA
o A purported assignment which does not comply with the required formalities will not effect transfer of
legal title to the asset.
▪ It will take effect in equity only – an equitable assignee has a right to require the assignor to
execute a legal assignment
o It is possible to assign IP rights which do not yet exist
• Registration of assignments
o Once an assignment of a registered right has been executed, the assignment itself must be
registered so that the new owner appears on the register.
o The effect of failing to register an assignment is that it will not be effective against another person
acquiring a conflicting interest in the right, unless that person actually knows about the earlier
(unregistered) assignment
o In respect of registered trade marks and patents, an unregistered assignee may not claim costs in
proceedings in respect of infringements which occur during the period between the assignment and
its eventual registration (subject to a six-month grace period) s.25(4) TMA and s.68 PA
o A registered design can only be enforced by its registered proprietor
Licensing IP
• Licensee’s rights are personal against the licensor, not property rights
• Registration of licences
o A licence of a registered right itself should be registered.
▪ This is particularly important for the licensee in case the licensor assigns the underlying
registered right to a third party
o Effect of failing to register a trade mark licence or patent licence is that the licence will not be effective
against a person who acquires a conflicting right in the trade mark or patent and does not know about
the grant of the licence.
Key licence terms
• Subject matter of licence
o Specify clearly what IP, belonging to the licensor, the licensee is permitted to use.
• Scope of licence
o The scope of a licence is usually limited to specific acts
o It may be further limited to allowing the licensee to do such acts only for specified purposes or in a
specific geographic territory
o It is common for a licence to include an express undertaking on the part of the licensee not to use the
subject matter in any way except as specified in the licence.
• Restrictions on the licensor’s use of the IP
o An exclusive licence gives the licensee permission to use the relevant IP to the exclusion of all other
persons, including the licensor itself.
o Under a sole licence, the licensor agreed not to grant the same permission to any third party, but the
licensor retains the right to do the acts permitted to the licensee.
o A non-exclusive licence allows the licence to third parties
• Integrity of the underlying IP rights
o Licensee will seek a warranty from the licensor that the subject matter of the licence belongs to the
licensor
o Licensee will also seek protection against the risk that the licensor allows it rights to lapse.
o Licensor is likely to accept an obligation to preserve the IP, in particular paying the renewal fees
o Common in exclusive licences to provide that, in the event that the licensor no longer requires the IP
itself- ie let the right lapse, it must offer an assignment to the licensee.
• Manner of use
o Licensor also likely to require control over how the licensee exercises such rights.
o Example – inclusion of quality control provisions
• Third party rights
o Licensee will want a warranty from the licensor to the effect that the licensee’s use of the IP (as
permitted) will not create any liability to any other person for infringement of an IP right.
▪ Licensors often resist giving such warranties because of the difficulties of conducting
searches and assessing the extent of the risk.
