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Patents – how to go about it in the UK?

Patents are highly valuable assets. In common with other assets, patents can be sold in their entirety (assigned) or licensed, subject to whatever terms and conditions the parties may wish to agree upon. Under Section 30(6)(a) of the Patents Act 1977, if a patent is assigned, the assignment must be done in writing and must be signed by, or on behalf of the assignor.

A Patent Assignment document should provide for the transfer of patent ownership (and other intellectual property rights if you so wish). The terms of a patent assignment agreement can allow for the assignment of a single patent or multiple patents.

When assigning a patent, certain formalities in addition to the agreement itself must be observed. As soon as is reasonably possible (and no later than six months) after the assignment of the patent is complete, 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.

A number of undertakings on the part of the assignor should be provided for in an assignment, including the obligation to assist the assignee in practical and legal matters relating to the assigned patents. Warranties should be also provided, ensuring the validity of the assignment and providing reassurance for the assignee.

The patents are referenced in the document and must be defined in a schedule. Great care should be taken when completing the schedule. Full and complete details of the patent(s) to be assigned should be included to the extent that it should be possible to obtain all information necessary concerning the patent(s) relevant to the assignment from the schedule alone without further reference to additional documents.

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