Exclusive Patent Licences Under English Law: Five Pitfalls the Licensee Must Avoid
The patentee has given you exclusive rights under the patent, so when someone infringes that patent, you can sue them, right? The answer may not be straightforward. Although, under the UK’s Patents Act 1977, an exclusive licensee has the same right as the patentee to bring proceedings for infringements committed after the date of the licence, the purported exclusive licence may not actually give the licensee the standing to sue.
According to the recent case law, licensees must follow the five “rules” set out below to ensure that the licence retains its exclusive character.
- Don’t allow the exclusive licence to be granted to anyone but you.
- Don’t grant an exclusive licence to another party.
- Beware the dangers of ‘salami slicing’.
- You must be able to vindicate your rights in the patent.
- Don’t agree to the patentee retaining rights to grant licenses to others in circumstances you can’t control.
Source: Law Business Research