Patent Licensing And Assignment Uk Vs Eu.
1. Conceptual Overview
(A) Patent Assignment
Patent assignment refers to the transfer of ownership of a patent or patent application, either wholly or partially, from the patent proprietor (assignor) to another party (assignee).
(B) Patent Licensing
A patent licence is a permission granted by the patent owner allowing the licensee to exploit the patented invention without transferring ownership.
2. Statutory Framework
United Kingdom
Patents Act 1977
Section 30 – Assignability of patents
Section 31 – Licences
Section 33 – Registration of transactions
Common law principles govern contractual interpretation
European Union
No single EU-wide patent ownership statute
Harmonisation through:
European Patent Convention (EPC)
Technology Transfer Block Exemption Regulation (TTBER)
National laws apply to assignments and licences
Competition law (Articles 101 & 102 TFEU) plays a dominant role
3. Core Differences: UK vs EU
| Aspect | UK | EU |
|---|---|---|
| Ownership law | Unified under Patents Act 1977 | National laws apply |
| Licence registration | Not mandatory but advisable | Depends on Member State |
| Competition scrutiny | Limited | Strong (TTBER, CJEU oversight) |
| Freedom of contract | High | Restricted by competition rules |
4. Patent Assignment: Legal Principles and Case Law
Case 1: Coflexip SA v Stolt Comex Seaway MS Ltd
(House of Lords, UK)
Issue
Whether rights under a patent assignment pass automatically or require express words.
Facts
Patent assignment used general wording
Dispute arose over whether ancillary rights transferred
Decision
Assignment must be clear and unambiguous
Only rights expressly or necessarily implied are transferred
Principle
➡ Patent assignments are construed strictly
➡ Courts will not infer transfer of rights lightly
Case 2: Schütz (UK) Ltd v Werit (UK) Ltd
(UK Supreme Court)
Issue
Extent of rights transferred when patent is partially assigned or licensed.
Ruling
Patent rights are divisible
Assignment or licence may be territorial, field-specific, or product-specific
Importance
Confirms flexibility in structuring patent transactions
Influences drafting practice
5. Patent Licensing: UK and EU Case Law
Case 3: Unwired Planet International Ltd v Huawei Technologies Co Ltd
(UK Supreme Court, 2020)
Issue
Nature of patent licences in FRAND contexts.
Decision
Courts can determine global licence terms
Licensing is central to patent exploitation
Significance
Strengthened UK courts’ role in licensing disputes
Shows judicial willingness to intervene in licensing terms
Case 4: Genentech Inc v Hoechst GmbH
(CJEU, EU)
Issue
Whether royalties are payable under a licence after patent revocation.
Facts
Licensee argued royalties ceased once patent invalidated
Decision
Royalties remain payable unless contract states otherwise
Principle
➡ Contractual autonomy respected
➡ Validity challenges do not automatically terminate licence obligations
Case 5: Huawei Technologies Co Ltd v ZTE Corp
(CJEU, EU)
Issue
Abuse of dominant position in patent licensing.
Ruling
SEP holders must follow fair negotiation steps
Injunctions may breach competition law if misused
Impact
Licensing heavily regulated under EU competition law
Less interventionist approach in UK post-Brexit
6. Assignment and Competition Law: EU Focus
Case 6: IMS Health GmbH v NDC Health GmbH
(CJEU)
Issue
Refusal to license IP as abuse of dominance.
Decision
Exceptional circumstances test
Compulsory licensing only in rare cases
Relevance
Assignments and exclusive licences scrutinised
Strong EU competition control
Case 7: Microsoft v Commission
(EU)
Issue
Whether refusal to license interoperability patents was abusive.
Ruling
Compulsory licence ordered
Innovation balance weighed against market foreclosure
7. Registration of Assignments and Licences
UK
Registration not mandatory
Failure to register affects:
Right to damages
Priority against third parties
EU
Registration rules differ
Some Member States require registration for enforceability
8. Comparative Analysis
| Factor | UK | EU |
|---|---|---|
| Contractual freedom | High | Limited by competition law |
| Court intervention | Licensing terms can be set | Competition authorities intervene |
| Assignment interpretation | Strict | National law dependent |
| SEP licensing | Judicial control | Regulatory control |
9. Practical Drafting Implications
UK agreements emphasise clarity and express transfer
EU agreements must:
Comply with TTBER
Avoid hardcore restrictions
Anticipate competition scrutiny
10. Conclusion
Patent licensing and assignment law in the UK and EU reflects two distinct philosophies:
UK: Property and contract-based approach, strong judicial control, flexibility
EU: Market regulation approach, strong competition oversight, harmonisation-driven
Post-Brexit, UK courts are likely to:
Assert greater autonomy
Move away from EU competition-centric interpretations
Emphasise innovation and contractual certainty
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