Practical Guide for Licensing Intellectual Property: Patents, Designs, Trademarks, and Copyrights
Owners of intellectual property, or ‘licensors’, have exclusive rights over their assets. Licensing intellectual property provides benefits to a broad range of businesses. It allows flexibility in the business’ development and also generates significant revenue. Most importantly, it allows the licensor to restrict infringement or allow certain rights onto others. This article will provide an insight into the practical steps involved in licensing patents, trademarks, designs and copyrights. For an explanation on the various intellectual property rights and the basics of protecting your rights, check out our previous article here.
Patents
Despite patent legislation in the UK currently being dated to 1977 (The Patents Act), the discussion has not died, with developments coming as recently as 28 June 2022 in the government consultation paper on “Artificial intelligence and Intellectual Property: copyrights and patents”.
For new startups who are considering using AI, the Court of Appeal considered whether artificial-intelligence systems can patent new inventions. Although it was decided that “Only a person can have rights – a machine cannot”, in the words of Lady Justice Laing, as the technology develops, it remains to be seen whether this stance will be maintained.
For the rest of us not well versed in the latest AI technology, the process of patenting is still vital to understand.
When choosing to grant or obtain a license over a patent, there are two primary avenues. Firstly, a licensor can approach entities individually, researching the market for suitable manufacturers or potential users of the invention. Once a party has been identified, the terms of the licensing agreement will be decided by taking into account the specific context. Alternatively, the licensor can ask the Intellectual Property Office (“IPO”) to endorse the patent with a license of right on the Patents Register.
A license of right means the licensor agrees to allow anyone who wishes to obtain a license to do so. The license will still be an ordinary commercial license, with the terms being private between the licensor and licensee. The IPO won’t investigate the validity of the license unless the two parties don’t agree to the terms. Additionally, the IPO reduces their annual fees by half if your patent is endorsed as a license of right.
To apply for a license of right, Patent Form 28 must be filled out, which carries no cost. If you are a licensee, you have the option of scanning through the Patents Register for all the patents endorsed with a license of right, and contact the owners individually to discuss the terms.
Designs
If a design is registered, it provides the design owner with the exclusive right to make articles incorporating their design for a 25-year period. If an individual wishes to obtain a licence over a registered design, they can apply for registration of their license by completing Form DF12A, which requests the IPO to record any changes of ownership in the Register of Designs. A licensee can search the proprietor’s name to ensure that they own the design which they are licensing.
A design is also protected automatically when the original design is recorded in a document, or an article has been made to the design. This ‘design right’ requires no formal application process. During the last 5 years of a right to an unregistered design, a license of right applies. This means that anyone who requests a license from the owner is entitled to one. The terms of the license agreement are (as always) a matter to be negotiated between the parties.
To find a registered design click here. For the relevant forms required when sending your design registration application to the IPO click here.
Trademarks
With trademarks, both the licensor and licensee can use Form TM50 to inform the IPO about a license agreement. When your licence agreement ends or the licensee’s details change, Form TM51 should be used, enabling the IPO to record the update on the Trade Marks Register.
Copyrights
If you want to license copyrighted material, you can directly license the use of your own via a licensing agreement which mirrors the other types of IP. Additionally, you can register your copyright with a licensing body such as the Collective Management Organisation (CMO), which will agree on licenses and collect royalties for you.
The CMO is a licensing body granting rights on behalf of multiple IP owners in a single blanket license for a payment. To learn more about the CMO and other licensing bodies click here. There are also different types of licenses such as the Creative Commons License which enables free access and use to thousands of pieces of work.
The procedure for licensing IP is fairly straightforward and doesn’t differ much across all types of IP. However, given the exposure and complexity of any legal agreement, it’s highly advisable that you consult a legal professional to gain an understanding of the best next steps for your specific circumstances. The information provided above should offer a mere starting point for your needs. Stay tuned for our next article on sub-licensing intellectual property.
- Authors: Niccolo Guastella and Edward Bennet-Gibbon
- Authors: Niccolo Guastella and Edward Bennet-Gibbon
In partnership with:
DISCLAIMER
This article has been written by law students for the sole purpose of providing informative insight. The information in this article is intended for educational purposes only and does not constitute legal advice, nor should the information be used for the purpose of advising clients. You should seek independent legal advice before relying on any of the information provided in this article.
Sources
Franks & Co, 'Licences available as of right for UK patents' Franks & Co - European Patents and Trademark Attorneys
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