Intellectual Property Law - Patents Assignment of Patents

By Rosanna Cooper

In the case of QR Sciences Ltd v BTG International Ltd [2005], the defendant company, BTG, (a purchaser of intellectual property and technology rights, particularly patents) granted an exclusive license to QR Sciences (an Australian Company), in September 2002 to use a large number of its patents subsisting in many different countries.

A clause in the license agreement granted QR Sciences the right to assign the patents in certain circumstances. Clause 14.4 of the license stated that: “throughout the term of the license BTG will not assign any patent without first offering to assign such patent to QRS”.

In March 2004, BTG informed QR Sciences that it was negotiating an assignment of the patents to a third party. QR Sciences began proceedings against BTG. QR Sciences argued that clause 14.4 applied when BTG proposed an assignment of the patents as well as when BTG abandoned the patents and the Court should construe the clause to have this meaning.

The following issues arose during the action:-

whether BTG's negotiations triggered QR Science's rights under clause 14.4; and whether BTG's proposals to QR Sciences in March 2004 discharged BTG's duty to offer the patents to QRS first. The Court ruled:-

BTG's negotiations with the third party to assign the patents did not trigger QR Sciences' rights under clause 14.4. If the negotiations had involved abandoning the patents, QR Sciences could have enforced its rights under the clause; BTG's proposals were made subject to contract and were therefore not contractual offers but only invitations to treat; BTG had not yet satisfied its contractual obligations to first make an offer to QR Sciences; and any offer by BTG to QR Sciences must be a contractual offer whereby QR Sciences had a reasonable time to consider the offer and respond.

If you require further information contact us at This email address is being protected from spambots. You need JavaScript enabled to view it.

© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Intellectual property law firm advising on patents, Patent attorneys, Patent Lawyers, Copyright, know-how, trade marks, trademarks, copyright law, IP lawyers, IP law Firm, IP valuations IP solicitors freedom to operate copyright lawyers, patent solicitors, branding,intellectual property lawyers, intellectual property solicitors. If you require further information contact us at This email address is being protected from spambots. You need JavaScript enabled to view it. or visit us at www.rtcoopers.com

Article Source: EzineArticles.com/?expert=Rosanna_Cooper

Invention Evaluations   Invention Evaluations

Choose the Invention Evaluation Plan that fits your goals and budget.

Inventors such as yourself who are looking to protect and profit from your invention or new product idea each have your unique needs and budgets. That is why we offer several invention evaluation plans for you to choose from that are tailored to the special needs of individual inventors.

Save Money   Invention Packages

Invention Commercialization and Profitability Program

Choose from our Basic, Advanced, or Professional Invention Combo Packages, depending on your particular needs and budget. Each combo package includes your choice of the Invention Sales Package, the Invention Licensing Package, or the Invention Marketing Package.

 

Invention Evaluations   Crowdfunding

Don't have money to develop your invention into a product?

Crowdfunding makes it possible for you to achieve your invention goal of selling, licensing, or manufacturing products based on your invention that you otherwise might not be able to do using equity or debt financing. And you don't give up any ownership stake in your invention.

 

Invention Patenting Group
161 Maple Drive
Park City, Utah 84098-5113
Telephone: (866) 279-7174
Facsimile: (435) 649-3801

Copyright 1999-2016 Invention Patenting Group. All rights reserved.

Powered by Joomla 1.7 Templates