Can the assignment of a patent be retroactively effective?

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Produced in partnership with Joshua Marshall of Fieldfisher

Published on: 13 February 2018

A Patent or patent application is Personal property that can be assigned (section 30(1) and (2) of the Patents Act 1977 (PA 1977)). In order to be effective, any Assignment of patents or patent applications must be in writing and signed on behalf of the Assignor (PA 1977, s 30(6)).

It is possible to retroactively assign a granted patent by, for example, entering an assignment agreement on 19 January 2018 under which the effective date from which the patent is deemed to have been assigned is 1 January 2018. As patents are personal property, a validly executed retroactive patent assignment should be effective as between the parties, but it appears that it is not effective against third parties.

In Effective dates: Roughton, Johnson and Cook on Patents [10.28], it states:

‘Where the assignment of a patent is retrospective, so an agreement signed today is stated to assign the patent last week, this will only

Joshua Marshall

Fieldfisher

Joshua is a solicitor in the Intellectual Property and Technology Protection and Enforcement team. He practices in all areas of intellectual property litigation including copyright, design, trademark and patent, primarily in proceedings issued in the Intellectual Property Enterprise Court. In addition, and as part of reputation management, he also specialises in proceedings for libel, slander and malicious falsehood. Joshua works with a variety of high end to high street fashion designers and retailers, including household names, assisting in the protection of their intellectual property rights in the market. He also works with an array of commercial entities in various sectors assisting in the protection and enforcement of their key brands, trademarks and product technologies. Finally, he advises both individuals and businesses in the protection of their reputations in the media and online.

Jurisdiction(s):

United Kingdom

Key definition:

Assignment definition

What does Assignment mean?

An assignment is 'an immediate transfer of an existing proprietary right, vested or contingent from one party to another'. Assignments can occur by consent or by operation of law.

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