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Summary Intellectual Property in Practice - Commercial Law and Intellectual Property
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7. IP IN PRACTICEASSIGNMENT OF IP
IP = Personal property so can be assigned to 3rd parties and forms part of owner’s estate
upon death
Assignment = outright transfer of property i.e. assignor parts with ownership
Rights in Passing-off and breach of confidence = NOT property so cannot be assigned
PARTIAL ASSIGNMENT
IP right = ‘bundle’ of rights because there is more than one way of infringing a single IPR
o Each manner of infringement = separate, exclusive right of owner
Possible to assign some but not all rights arising in respect of a single item of IP
o s.24(2) TMA = ™
o s.90(2) CDPA = ©
o s.222 CDPA = UDR
o s.30(2) PA = Patents
E.g. author writes novel and producer interested in adapting it for film – assignment of ©
can be limited acts necessary for producer to make film rather than give away all rights
o Author retains rights in the novel e.g. publish it or record audiobook
ASSIGNMENT OF A SHARE
Can in principle assign a share in IP – IP becomes jointly owned by assignee and assignor
Joint ownership best avoided in practice – creates new layers of logistical complexity for
joint owner who wishes to exploit or enforce rights
o Waivers/consents may have to be sought from other owner for property to be dealt
with freely
, FORMALITIES
REQUIREMENT FOR WRITING
Assignment of IP must be in signed writing + show a clear intention to assign
o s.24(3) TMA = ™
o s.90(3) CDPA = ©
o s.222(3) CDPA = UDR
o s.30(6) PA = Patents
o s.19 RDA = Reg design (not express but implicit)
Oral assignment or agreement to assign will NOT effect transfer of legal title to asset
o Takes effect in equity only – equitable assignee has right to require assignor to
execute legal assignment
Possible to assign IP rights which do not yet exist e.g.
o Pending apps for registered rights can be assigned before registration accepted
o ss.91 +223 CDPA permit assignment of © and UDR in works/designs not created yet
REGISTRATION
Once assignment of registered right executed, assignment itself must be registered so new
owner appears on register – s.25(2)(a) TMA / s.19 RDA / s.33 PA
o In interests of assignee to get it registered ASAP
o Failure to register = not effective against another person acquiring conflicting interest
in right UNLESS that person actually knows about earlier (unregistered) assignment
Until assignee registered as owner he will face difficulties enforcing right if it is infringed
o ™ and patents – unregistered assignee may NOT claim costs in proceedings in
respect of infringements occurring between assignment and registration
s.25(4) TMA / s.68 PA
o Registered designs can only be enforced by registered proprietors s.7A(1) RDA
o Assignee cannot rely on assignment doc as evidence of ownership – s.19(5) RDA
Consequence of not registering – s.25(3)(a) transaction ineffective against a person
acquiring a conflicting interest + s.25(4) not entitled to costs if not registered within 6mos
ASSIGNING NON-PROPERTY RIGHTS
Passing off + Confidential info cannot be assigned as such – not property rights
One party may want to dispose of such rights in favour of another to achieve same effect
Passing off – Goodwill can be assigned as part of a package comprising the whole
business to which it accrues / attaches
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