The Federal Supreme Court recently decided on whether the Patent Office may rightfully register a patent licence solely on the request of the licensee. This was the practice of the Office in view of the fact that the Patent Act provides no specific rules as to who may apply for the registration of a licence and whether it is sufficient for proof of title to file the licence contract, or whether an explicit consent of the patent owner is needed; the Act also does not provide any rules on how the Registrar should act if it is contentious whether a licence contract is (still) valid or not.
The Court gave due consideration to the fact that the registration of a patent licence strengthens the legal position of the licensee because an assignee of the patent is obliged to tolerate continued use of the patent by the licensee according to the stipulations of the licence contract if the licence was registered. This, in the view of the Court, results in a burden for the owner of the patent since a sale of the patent may be made difficult in view of the licensee's right to continued use.
The Court therefore held that the consent of the patent owner is necessary for the registration of a patent licence with the Office on the request of the licensee and that the Office must involve the patent owner in the proceedings for registration, at least by informing the owner of the licensee's request to register the licence. If the owner contests the validity of the licence before the Office, the registration cannot be effected since it is not within the competence of the Registrar to decide on the validity of the licence contract. In this case, the licensee will need to file an action before the civil courts in order to obtain registration of the licence.
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| Brendan B Bolli and Rainer U Schalch |
E Blum & Co AG
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