Legal Applications in Technology

Analyze the legal and professional impact of Transfer of Patent license within a typical commercial setting

Hansa K. EdirisingheBSc (Hons) University of Portsmouth, UK

MSc IT - Cardiff Metropolitan University, UK

Why did I select this topic ?

• Within the last decade, there has been an explosive growth in the importance of intellectual property (IP) as a corporate asset.

• Patent license has a high commercial value• Obtaining or transferring patent ownership

could impact the commercial setting.• Facts find, the patent Infringement occur due

to unconditional assignments

What is Patent license?

• Form of intellectual property• Provides legal right to exclude others from

performing certain activity in the country of issuance• Thus, it prevents others from

• making, • using, • selling or • distributing

the patented invention without permission for a fixed period

The Law & key points of patent license

• Comes under Intellectual property act, No. 36 of 2003 of Sri Lanka

• Ownership could be individual or join• Duration : 20 years after the filing date of

application• The owner of the patent can use, sell or

license the patented technology and derive financial benefits

Transfer of Patent license - The Legal and professional impact • Patent can be assigned or transmitted• Should be in writing signed by or on behalf of

the contracting parties• 4 Types of patent transfer for commercial

purposes1. Royalty basis2. Lump-sum sales price3. Startup Companies4. Work-for-Hire

Transfer Patent ownership- Advantages

• Royalties – receiving royalty payments during the validity period of patent

• Lump-sum sales price – assignee has to pay the total price on royalty basis or once

• Startup Companies – Venture capitalist invest for the invention

• Work-for-Hire – employee can demand for the salary

Transfer Patent ownership - Disadvantages

• Royalties – No authority to cancel the patent rights in case of failure of royalty payment

• Lump-sum sales price – Cannot profit if the invention produces more royalties than he thought it would

• Startup Companies – patent ownership goes to venture capitalist for a period

• Work-for-Hire – ownership does not belong to the inventor (employee)

“Patent license Transferring in a typical commercial setting”

Evaluation

• Every transfer type does not suite for every commercial setting

• Discuss the potential advantages and disadvantages

• Evaluate suitable transfer type under different set ups.

My approach on study

• Pertaining to literature of the subject– National Intellectual Property Office Sri Lanka– World Intellectual Property Organization (WIPO)– Online journal articles

• Identify the legal and professional aspect of Patent Transfer

• Analyze how does it impact within a typical commercial setting

Framework of my Report“Analyze the legal and professional impact of Transfer of Patent license within a typical commercial setting”

1) Introduction1) Literature review2) Formulating the research problem3) Research methodology4) Hypothesis5) Scope and limitations

2) Presentation and Analysis of Data1) Patent License and patent ownership2) Law behind transfer Patent ownership3) A discussion of today’s typical commercial setting4) The Potential for legal and professional impact on Transfer of Patent

license 5) Detailed analysis of the legal impact6) Detailed analysis of the professional impact

3) Conclusions and Recommendations

Thank You