Carlos González

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Assignment of patent rights

Becerril Coca & Becerril SC Intellectual Property – Mexico 

Introduction
A patent owner has the exclusive right to exploit its patent, or authorise a third party to do so, for a set period.

Therefore, the value of patent rights is unquestionable, as they constitute property rights and can therefore be totally or partially assigned from one owner to another.Owning a patent provides value in two ways:

– a patent owner can rely on having exclusivity over the use and exploitation of the products relating to the invention; and
– the rights over a patent can be sold, bought, licensed or the subject of a lien to guarantee the fulfilment of an obligation.

In this regard, patent rights not only enable businesses to protect their innovations and gain an advantage over their competitors, but also créate value as important assets, which in some cases may function as the basis of a decision on selling or acquiring a company or part thereof.

Patent licensing
Despite licence grants determining use and exploitation rights over a patent, notable limitations exist regarding decisions which are reserved for the owner of the patent, either due to the proper nature and characteristics of ownership rights or for specific restrictions that may be regulated in licence agreements.

Patent assignment
There are several legal implications that patent owners must bear in mind when a business project involves an assignment of patent rights.
Consequently, parties should follow a well-organised plan when acquiring or transferring patent rights.

In this regard, keeping the ownership of patents in order guarantees easy access to the management and control of the associated rights.

The assignment of patents plays an important role in facilitating the maintenance, defence and
enforcement of owners’ rights.

While patent licensing involves providing limited permission to use a patent, a patent assignment represents a total and permanent transfer of the patent from its owner (the ‘assignor’) to another party (the ‘assignee’).

Thus, a patent assignment enables the assignee to:
– allow other parties to use the patent;
– file litigation proceedings for any infringements of the patent; and
– prevent other parties from exploiting the invention, including: seeking remedies; and requesting the confiscation of infringing products.

As a legal solution, a patent assignment constitutes the renouncement of the assignor to the rights over the patent. While the assignor could obtain a new permission to use the patent, it no longer holds control or disposal over it. The assignee replaces the assignor as the owner of the patent, and consequently acquires the rights and obligations associated therewith.

Mexican legal context
In Mexico, an assignment of rights compels the parties from the execution of the agreement. However, for the transfer of rights to be binding on third parties, it must be registered with the Mexican Patent Office (MPO).

According to the IP Law, there is no specific deadline after the assignment to register the transferred rights. However, the sooner the better – this enables the MPO to update the patent records with the accurate owner information and the new owner to properly act with regard to the maintenance, defence and enforcement of its patent rights.

For defence and enforcement purposes, it is necessary to act on behalf of the recorded owner. Therefore, the change in ownership must be duly recorded before the MPO to file litigation actions against third parties or act on behalf of the new owner (the assignee) in proceedings such as granting use licences.

For the peace of mind of the parties involved and to ensure that the transfer of rights has been effected correctly, it is important to cover all legal aspects under the provisions and requirements of the law and local practice when drafting, executing and registering an assignment agreement. This will ensure that the patent or patent application is assigned without any unnecessary risks or potential contingencies.

In this regard, practitioners must consider various relevant factors to facilitate the creation of the best strategy and the implementation of a proper solution which ensures that the correct conditions are in place for a transfer of rights project.

 

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