Patents & Design Rights UK: Assign, Licence, Enforce

Overview

A patent is a monopoly right granted by the Intellectual Property Office over an invention that is new, inventive and capable of industrial application. Once granted, it lets the holder stop others from making, using, importing or selling the invention in the UK, usually for up to 20 years subject to renewal fees.

A registered design protects the visual appearance of a product: its shape, lines, contours, colours, texture or ornamentation. Know-how is different again. It is not a registered right at all but the practical, often confidential, body of technical information and experience that makes an invention actually work in the real world.

Because these rights have commercial value, they get bought, sold, licensed and fought over. The documents commonly used include patent assignments (transferring ownership outright), patent and know-how licences (permitting use without transferring ownership), registered design assignments, and cease and desist letters where someone is suspected of infringing.

Each document does a specific job, and choosing the wrong one, or drafting it loosely, can leave you with rights you cannot properly enforce.

Key steps

1. Work out what you actually own. Before you transfer or licence anything, confirm the legal position. Check whether the patent or design is granted or still pending, who the registered proprietor is at the IPO, whether any employees or contractors contributed, and whether any prior assignments or security interests exist. Getting this wrong at the start undermines everything that follows.
2. Decide between assignment and licence. An assignment transfers ownership permanently. A licence grants permission to use the rights while you keep ownership. Assignments suit sales, group restructures and acquisitions; licences suit collaborations, distribution arrangements and situations where you want ongoing royalties or control. The commercial intention should drive the choice, not the other way around.
3. Define the scope precisely. Whatever route you take, the document needs to spell out exactly which rights are covered: specific patent numbers, design registration numbers, related applications, improvements, and any associated know-how. For licences, also nail down territory, field of use, exclusivity, sublicensing rights, duration and termination triggers. Vague wording here is where most disputes start.
4. Handle payment and warranties carefully. Consider how consideration is structured: lump sum, milestone payments, running royalties, or a mix. Think about warranties the owner is giving (that they own the rights, that the rights are valid, that there is no known infringement) and what indemnities sit behind them. These clauses allocate real financial risk.
5. Register and record where required. Patent and registered design assignments should be recorded at the IPO promptly. Failing to record an assignment can affect your ability to recover costs in later infringement proceedings and can create priority problems if the seller later purports to transfer the same rights elsewhere. Licences can also be recorded and often should be.

Common questions