Question Q194 National Group: United Kingdom Title: The ... - AIPPI

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owners; the Comptroller having the power to make orders as between co-owners (section 37). There have been cases where the Comptroller of Patents has given a co-owner the power to grant licences without referring to the other co-owners. See for example, McGriskin's Patent (BL 0/36/99 and 0/135/00) where it was ordered that a newly determined co-owner (under Patent Act s.37 proceedings) should be permitted to grant licences without agreement or interference from the other coowner, overriding section 36. See also Andrew's Application (BL 0/21/98). Further, the Court of Appeal in Hughes v Paxman [2006] EWCA Civ 818, confirmed that under the Patent Act 1977 section 37, the Comptroller does have jurisdiction to grant licences to a party approved of by only one co-owner. However, the broad discretion exercised by the Comptroller of Patents is not available in all IPRs. Note that the situation for other IPRs is often fundamentally different. Therefore, for example, for copyright, one co-owner has no right to exercise the rights alone, not even if he accounts to his co-owners for an appropriate share of the profits (Cescinsky v George Routlege & Sons Ltd [1916] 2 KB 325). 3) The working guidelines established for the Singapore EXCO contained also the question related to the possibility of the co-owner of an IP right to licence this right to third parties. No distinction was, however, made in this context between a non-exclusive and an exclusive licence. No differentiation was also made on the number of licences which could be given by one co-owner in case the non-exclusive licence would be permitted by the national law. And if the AIPPI adopted a resolution on the conditions of granting the licence, it also appeared during the discussion at the EXCO that some different or more precise solutions could have been obtained if the Working Committee had made a distinction between the nature of the licence. Therefore, in order to improve the work of the EXCO, the groups are invited to specify how the differences in the nature of licenses (non-exclusive or exclusive) influence the solution of their national laws in respect of the right to grant the licence by a co-owner of an IP Right. The law of the UK in general draws no distinction between exclusive and nonexclusive licences, in regard to the question posed. If a licence is permitted it may be either exclusive or non-exclusive. We would refer the reader to the answer provided by the UK to question 194 at the Singapore ExCo 2007 for the position in the UK as to the right of co-owners to grant licences. Some of the UK’s legislation draws specific attention to the ability to have both exclusive and non-exclusive licences, for example the Trade Mark Act 1994 in sections 28 – 31, which recognises a difference between exclusive and nonexclusive licences; in that, subject to the licence terms, the exclusive licence provides the same rights to the licensee as if the trade mark had been assigned. Further, the UK’s copyright legislation in the Copyright Designs and Patents Act 1998 makes certain infringements actionable by a non-exclusive licensee, and like the trade mark legislation recognises that exclusive licensees may bring actions for infringement without the owner.
4) One of the most difficult questions which appeared during the discussion at the Singapore EXCO was the possibility to transfer or assign a co-owned share of an IP right. And the problem seemed so complicated that finally the Working Committee decided to withdraw its proposal for a resolution on this point. In fact, the discussion showed that the solutions concerning the right to transfer or assign may vary since there is a huge variety of situations related to the transfers of the co-owned share. Notably, one could imagine that the transfer is operated on the whole share of the co-owned IP right, but it also could be simply an assignment of a part of the co-owned share, creating therefore an additional co-owner of an IP right. And such transfer of a part of a share of an IP Right could be used to overcome the limitation which could exist on the granting of licences by the co-owners. The Groups are therefore invited to precise their position on the question of the transfer or assignment of a share of the co-owned IP Right, taking into the consideration the different situations which may occur ( the transfer of the whole share of a co-owned IP Right or the transfer only of the part of the share of the co-owned IP Right). In the UK any assignment as described in the foregoing question is permissible by contract. The English law permits parties to contract for anything that is not prohibited by statute, commonly known as freedom of contract. If there were a dispute between owners as to the ability to assign only a sub-share of the share presently owned by the co-owner, this could be referred to the Court or in the case of patents the Comptroller for a determination under their power set down in section 37 of the Patents Act referred to above in sub-question 2. 5) The exercise of an IP right co-owned by two or more co-owners each of whom has in principle the right to exploit the co-owned right, may also raise difficulties from the point of view of competition rules. The co-owned IP Rights may give the co-owners the dominant position on the market and their agreement on the co-owned IP Rights (when for example it prohibits the licensing) may also be seen as eliminating the competitors from the market. The groups are therefore invited to explain if their national laws had to treat such situations and what were the solutions adopted in those cases. The UK like elsewhere seeks to achieve a balance between the public interest in the limited monopolies of IPRs, and the public interest in competition. The response to this sub-question considers three areas of law; (1) European Union law on Competition, (2) UK law on Competition, and (3) Compulsory licences in patents. (1) European Union Law IPRs are monopolies and restrict competition; as a result agreements which affect the ownership and control of IPRs and the manner of their exploitation can breach competition law in certain circumstances. In relation to European Union law the affect upon competition by IPRs between member states is the paramount concern.
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Question Q194 National Group: United Kingdom Title: The ... - AIPPI

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