New Documents for Patents, Know-How & Designs

July 2010

For many businesses with creative and inventive aims, patents, know-how and designs are essential and valuable assets. Not only does intellectual property provide comprehensive protection for inventions in the form of copyright, designs and patents but it also provides a clear framework to allow for commercial exploitation.

Assignment and Licensing

As with any asset, patents and registered designs can be dealt with in one of two “core” ways. They can be transferred entirely or ownership can be retained with certain rights to use them bestowed upon others. They can be either assigned or licensed. Unsurprisingly, assignments or licences of patents and designs will generally be subject to the terms and conditions agreed upon by the parties involved in the transaction.

A patent assignment is generally a straightforward matter which requires some form of payment in consideration of the transfer of ownership of the patent. The same applies in the case of a registered design assignment. Such matters will form the subject matter of the assignment agreement. In addition to this, certain formalities must be satisfied with regard to the change of ownership. In the case of patents, a Form 21 must be completed and submitted to the Intellectual Property Office along with a fee of £50. Form 21 and all other patent forms are available from the Intellectual Property Office website. In the case of registered designs, Form DF12A must be submitted to the Intellectual Property Office (however there is no fee in this case). Form DF12A and all other registered design forms are available from the Intellectual Property Office website.

An all-new Patent Assignment is now available from Simply-docs along with an updated version of our Registered Design Assignment. Both are located in the new Patents, Know-How & Designs sub-folder.

Patent Licensing provides far greater scope for negotiation than a simple assignment. The original owner of a patent retains the ownership of the patent and allows another party (the licensee) to use that patent, subject to a variety of terms and conditions that the two will agree upon. A patent licence provides the owner of a patent with a considerable degree of control over the use of their patent by other parties and can also provide a revenue stream in the form of royalties. As with the registration of an assignment, licences must be registered with the Intellectual Property Office using Form 21, available from the Intellectual Property Office website.

As part of the new Patents, Know-How & Designs package, Simply-docs has updated its Patent & Know-How licence agreement.

We've Got the Know-How

The Importance of Know-How cannot be underestimated. The knowledge of how to apply the information contained within a patent is just as important as the patent itself. Without the “instructions”, the “parts” are of little use. Know-how must be carefully guarded and does not necessarily benefit from the same strict protection as the patent(s) to which it relates. To this end, Simply-docs has produced an all-new Know-How & Technical Assistance Agreement which is designed for use with our new Manufacturing Licence Agreement – providing for the supply of know-how and for the provision of on-site assistance to a licensee. Both new documents are available in the new Patents, Know-How & Designs sub-folder.

The contents of this Newsletter are for reference purposes only and do not constitute legal advice. Independent legal advice should be sought in relation to any specific legal matter.

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