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INTELLECTUAL PROPERTY vol 21(1) patents and technology transfer

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INTELLECTUAL PROPERTY vol 21(1) patents and technology transfer

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About this title—authors, overview

Commentary

1 Scope of the discussion on patents and patents applications

2 Meaning of ‘patent’ and the patent legislation generally

3 Form and extent of United Kingdom grant of patent

4 Patentee’s rights

5.1 Obtaining UK protection—in general

5.2 The national route

5.3 The European route

5.4 The Patent Co-operation Treaty route

6 Statutory criteria for patentable inventions

7 Exclusions and prohibitions from grant of patent

8.1 Novelty—in general

8.2 Unpublished patent applications

8.3 Prior disclosures that do not invalidate a patent

9 Patentable invention—inventive step

10 Patentable invention—industrial application

11 Claim interpretation—whether infringing product or process falls within the scope of the patent claim

12 Infringing act—direct infringement of patent

13 Infringing acts—indirect infringement of patent

14 Exceptions to infringement of patent

15.1 Date of filing

15.2 Form and contents of an application for a patent

16 Contents of specification, claims and drawings and abstract—patent application

17 Deposit of biological material—patent application

18 Priority dates under patent applications

19 Claiming priority—patent application

20 Preliminary examination of patent application

21 Search—patent application

22 Publication of patent application

23 Observation by third party on patentability

24 Substantive examination of patent application

25 Grant of patent

26 Term and renewal of patent

27 Restoration of lapsed patent

28 Extending time limits for patent applications and patents—specified periods

29 Extending time limits for patent applications and patents—prescribed periods

30 Reinstatement of patent application

31 Information and inspection of documents—patent applications

32 Correction of errors in relation to patents

33 Mention of inventor or inventors in a patent or patent application

34 Persons entitled to obtain patent

35 Determination of questions of entitlement to patents

36 The position of licensees in relation to patent applications

37.1 Inventor rights

37.2 Rights of co-owners

38 Rights of co-owners in relation to patents—apart from agreement

39 Rights in inventions made by employees—for the purposes of the Patents Act 1977

40 Compensation of employees for certain patented inventions

41 When is compensation available to employees for patented inventions?

42 The register of patents

43 The transactions involving patents that can be recovered and the effect of registration

44 Grounds for revocation of patent

45 Putting validity of patent in issue in proceedings

46 Revocation of patent by comptroller on own initiative

47 Licences of right under patents

48 Licence as of right under patent settled by comptroller

49 Effect of patent infringement proceedings on licences of right

50 Devolution of patent or patent application on death

51 Effect of dissolution of company on patent owned by company

52 Patent rights assignable

53 Formal requirements for patent assignments

54 Assignment of patent application before grant

55.1 Implied terms

55.2 Covenants applicable to full title guarantee and limited title guarantee

55.3 Covenants applicable to full title guarantee only

55.4 Covenants applicable to limited title guarantee only

56 Assignments of inventions and patent rights

57 Restrictions on assignment of inventions and patent rights

58 Estoppel in relation to patent assignments

59 Covenant for validity of patent

60 Rights of assignee of patent subject to earlier rights of which the assignee has notice

61 Assignment of patent for a part of the United Kingdom only

62 Transfer of right to apply for patent protection abroad

63 Mortgage of a patent or patent application

64 Use of agents in relation to patents

65 The right to a hearing in relation to patents—proceedings before the comptroller

66 Scope of rules concerning proceedings before the comptroller—patent matters

67 Commencement of proceedings in relation to patents and filing of evidence

68 Evidence, copies and powers of the comptroller to control proceedings in relation to patents

69 Hearings in relation to patents before the comptroller and decisions of the comptroller

70 Electronic communication, delivery and filing of patent documents

71 Supplementary protection certificates—in general

72 Requirements for a supplementary protection certificate

73 Export and stockpiling exceptions to infringement—applying to supplementary protection certificates for medicinal products

74 Term of protection for supplementary protection certificates

75 Meaning of ‘technology’ and ‘technology transfer’

76 Reasons for technology transfers

77 Typical technology transfer agreements

78 University to technology transfer company to spin-out—with grants

79 University to technology transfer company to spin-out—with venture capitalist support/funds

80 University licensing to existing company

81 Types of organisations operating in the technology transfer sector and their activities

82.1 Background

82.2 Technology transfer models adopted by universities

83 Stages in the technology transfer process—commercialisation of university-generated technology

84 Meaning of ‘research organisation’ in the technology transfer context

85 Research, high-technology and bio-pharma companies

86 Companies operating in the British pharmaceutical industry

87 UK governmental bodies that conduct research or develop technology

88 Venture capitalists operating in the innovation, research and technology sector

89 Role of venture capitalists in research and development

90 The regulation of the technology transfer sector

91 Technology imports and exports

92 Strategic export controls

93 Types of export licence for controlled goods

94.1 Strategic export control lists

94.2 Military goods

94.3 Dual-use goods

95 Embargoed destinations—export and trade control

96 End-use control—weapons of mass destruction

97.1 Categories subject to control

97.2 Category A goods

97.3 Category B goods

97.4 Category C goods

97.5 Licences for conducting controlled activities

98.1 Other export controls—in general

98.2 Chemicals and pesticides

98.3 Drugs

98.4 Seeds and plants

99.1 Importing technology—in general

99.2 Military equipment

99.3 Nuclear material

99.4 Chemicals

99.5 Medicines

99.6 Seeds and plants

100 Commercial dealings relating to technology transfer—introduction

101 Scope of the section on commercial dealings involving technology

102 Assignments and licensing of intellectual property—an overview

103 Assignments and the licensing of intellectual property—in more detail

104 Intellectual property as a form of personal property

105 Application of Law of Property Acts to intellectual property transactions—in general

106 Covenants implied by dispositions of property under the Law of Property (Miscellaneous Provisions) Act 1994

107 All rights are transferred on a conveyance—application to intellectual property transactions

108 Criminal offence—concealment and falsification on the disposition of property

109 Interpretation—meanings implied by the Law of Property Act 1925

110 Requirements for notices under the Law of Property Act 1925

111 Relief from forfeiture—application of the Law of Property Act 1925 Section 146(2) to intellectual property transactions

112 Execution formalities—application to intellectual property transactions

113 Types of property and property interest in intellectual property

114 Assignment of patents and patent applications

115 Licence and sub-licences—patents

116.1 How co-owners hold their interest in a patent

116.2 Right of a co-owner to work a patent

116.3 Right of co-owner to work a patent through an agent or a sub-contractor

116.4 Situations when one co-owner requires the consent of the other co-owner

116.5 Supply of means of working the invention

116.6 Supply of products by a co-owner

117 Assignment of copyright—formalities

118 Copyright licences—formalities

119 Provision concerning co-owners of copyright

120 Overview of the protection of designs

121 Formalities for transactions involving registered designs

122 Formalities for transactions involving unregistered designs

123 Supplementary unregistered designs

124 Form of licence of intellectual property

125 Power to sub-licence and to assign a licence of intellectual property

126 Sub-contracting under a licence of intellectual property

127.1 Where the licence sets out the activities which a licensee may undertake

127.2 Where patent licence does not set out the permitted activities

128.1 Inventions and improvements—in general

128.2 Meaning of inventions

128.3 Meaning of an ‘improvement’

128.4 When must an improvement be communicated to the licensor?

128.5 The extent of the licence of improvements

129.1 Meaning of ‘exclusive’, ‘non-exclusive’ and ‘sole’

129.2 Exclusive licences

129.3 Sole licence

129.4 Non-exclusive licence

130.1 Licences granted for a fixed period

130.2 Licence granted without termination provisions or for a fixed period

131.1 Forfeiture

131.2 Breach

132 Calculating the notice period for intellectual property agreements

133 Consequences of termination of intellectual property agreements

134 Position of sub-licensees on termination of a patent licence

135 Where a licence agreement terminates on expiry of a patent

136 Termination and the effect of invalidity rights on patent licence

137 Implied terms in patent licences—general rule

138 Implied covenants and warranties (concerning title, non-infringement and validity) in patent licences

139 Implied terms under patent licences—interference and threats by licensor

140 Implied licence to use and sell a patented article by a buyer of the patented article

141 Implied warranty as to quiet enjoyment—patented articles

142 No implied obligation to exploit under a patent licence

143.1 Introduction

143.2 Best endeavours

143.3 Reasonable endeavours

143.4 All reasonable endeavours

144 Implied obligation to pay a reasonable royalty for a patent

145 The payment of interest on royalties for patents

146 Whether time is of the essence for the payment of patent royalties

147 Currency in which patent royalties should be paid and reference to ‘pounds’

148 Payment of royalties beyond the scope of a patent, after the expiration of a patent or termination of a licence

149 Royalty sharing (‘royalty stacking’)—IP licences

150 Other points arising on the payment of patent royalties

151 Termination for failure to allow auditing of accounts—patent licences

152 Right to inspect accounts to continue after termination of a patent licence agreement

153 Maintaining patents in force, requirement to pay royalties

154 Requirement to bring or defend proceedings for patent infringement

155 No challenge clauses in intellectual property agreements—implied terms under English law where competition laws are not applicable

156 The meaning of a ‘business’—intellectual property agreements

157 Most favoured licensee clauses—patent licences

158 Normal terms of a patent licence

159 Periods of time—intellectual property agreements

160 Confidentiality obligations under intellectual property agreements

161 Service of notices—intellectual property agreements

162 Applicable law and jurisdiction—intellectual property agreements

163 Competition law—in general

164 Application of the Chapter I prohibition to technology transfer agreements

165 Conditions for the Chapter I prohibition to apply

166 Object or effect of agreement—condition for the Chapter I prohibition to apply

167 Voidability of agreement or decision that offends the Chapter I prohibition

168 Appreciable effects and immunity for small agreements—Chapter I prohibition

169 Subcontracting agreements—Chapter I prohibition and technology transfer agreements

170 Pro-competitive agreements—Chapter I prohibition and technology transfer agreements

171 Exclusions and exemptions from the Chapter I prohibition under UK law

172 Application of the Chapter II prohibition on market abuse to technology transfer agreements

173 Fines for breach of Chapter I and II prohibitions

174 Common law on restraint of trade—intellectual property licences

175 Block exemptions relevant to technology transfer

176 Introduction to the technology transfer block exemption

177 Requirement for the technology transfer block exemption to apply—agreement must relate to the production of goods and services

178 Requirement for the technology transfer block exemption to apply—agreement must be between a licensor and licensee

179 Requirement for the technology transfer block exemption to apply—technology must move from one undertaking to another

180 Requirement for the technology transfer block exemption to apply—market share and the exemption

181 Duration of technology transfer block exemption

182.1 Introduction

182.2 Competing undertakings

182.3 Non-competing parties

182.4 Non-competing parties becoming competing parties

183 Less severe restrictions under the technology transfer block exemption—affecting only a provision in agreement and not the whole agreement

184.1 Meaning of ‘R&D agreement’

184.2 Meaning of ‘exploitation of the results’

184.3 Meaning of ‘joint exploitation’

185 Conditions for the R&D agreements block exemption to apply

186.1 Conditions that must be met—otherwise the R&D agreement is cancelled

186.2 Period of exemption

187 R&D agreements block exemption—‘hardcore’ restrictions—whole agreement not exempt

188 Less severe restrictions—R&D agreements block exemption—affecting only a provision in agreement and not the whole agreement

189 Introduction to the block exemption for vertical agreements

190 Market share thresholds applying to the vertical agreements block exemption

191 Hardcore restrictions and other prohibited provisions under the vertical agreements block exemption

Stop drafting from scratch and work more productively.

Offering an unrivalled collection of non-litigation precedents for everything specialist and generalist practitioners are likely to encounter.

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