Failing the Assignment
In December the High Court heard an appeal from the Intellectual Property Office in a patent entitlement dispute.
The appeal is here and doesn’t involve anything legally novel but serves as a useful reminder of the importance of wording when it comes to assignments of intellectual property rights.
Dr Clearwater and a company called Bionome collaborated on a project under a collaboration agreement.
That project resulted in a novel weedkiller technology. Bionome applied for a patent as the sole applicant however Dr Clearwater argued they should be joint applicants.
The parties agreed that Dr Clearwater was an inventor, however Bionome argued that the collaboration agreement assigned Dr Clearwater’s rights in the IP, and therefore Dr Clearwater was not entitled to be a joint applicant.
Section 7 of the Patents Act 1977 deals with who may apply for and obtain a patent.
Paragraph 28 sets out the question for the court very clearly:
The dispute between the parties below and before me is whether the Collaboration Agreement amounts to no more than an expression of intention to assign the patent rights at some point in the future once certain steps had been carried out (which were not in fact performed, so the agreement to assign was never perfected and the assignment did not take place), as Dr Clearwater submitted and the Hearing Officer agreed, or whether it was in fact an agreement assigning or at the very least agreeing to assign the rights without further condition and so Bionome legitimately applied for the Applications.
In the end the agreement didn’t clearly create a future assignment of rights which takes place automatically. It did set out certain intended steps and expressed an intent to eventually make an assignment of rights, but there was no automatic trigger or effect in the agreement itself. It agreed the framework for a future assignment to take place, but was not itself the future assignment.
This is an issue that I’ve seen arise in many draft collaboration agreements; where there is no clear assignment of rights but a vague intent to later agree to assign rights (which itself is not an assignment, as it requires further steps).
In my view it’s always best to be completely clear on this point, and if the intent is to actually assign intellectual property rights then make sure you are using the words “hereby assigns” or some variant - with as little qualification as possible.
PS - I also liked this part of the report:
31. Further, it was not in dispute either below or before me that although the Collaboration Agreement is entitled “DRAFT Collaboration Agreement”, still contains some tracked changes in red and has only been signed and dated by Dr Clearwater and Mr Tindall, all three parties committed to its terms and it is to be treated as a legal contract entered into between them.
👀