Important point of law on patent assignments buried in drossy case

no worriesIP Draughts was idly perusing the recent cases on BAILII this afternoon, when he came across the case of Wright Hassall LLP v Horton Jr & Anor [2015] EWHC 3716 (QB), a decision that was published yesterday.

He probably wouldn’t have bothered to read it, except for the name of the claimant, which he has always found mildly amusing and appropriate for a firm of solicitors. (Note to non-UK readers: in UK idiom, a hassle is an irritating problem or inconvenience, and a right hassle is emphatically so. The conventional US meaning may be different.)

Oh-ho, thought IP Draughts. Could this be a case about solicitors’ negligence? He was even more intrigued when he started to read the case, which concerns the commercialisation of an invention.

Ultimately, the case is a rather boring mess of arguments about the legal effect of various corporate, commercial and IP documents. Only one point stood out for IP Draughts, which was that one of the parties argued that patent assignments are ineffective if consideration is not given for the assignment. See paragraphs 27-49 of the case at the link above.

This is a subject on which this blog has previously commented. For example, see here in the context of discussion of executing assignments as deeds.

IP Draughts is relieved to see that the judge concluded that:

(a) there was no English authority directly on point (ie that IP Draughts might have missed); and

(b) there was no general requirement for consideration in a patent assignment (nor, in IP Draughts view, an assignment of any other type of IP) under English law.

The judge does not get into the question of whether an assignment without consideration is a gift rather than forming part of a contract, presumably because he was not asked to do so.

His conclusion is:

an instrument in writing satisfying s30(6) [of the Patents Act 1977] is effective as a legal assignment without any additional requirement for consideration.

As the judge notes, section 30(6) doesn’t mention consideration. The only requirements of that section are:

(6) Any of the following transactions, that is to say—(a) any assignment… of a patent or any such application, or any right in a patent or any such application… shall be void unless it is in writing and is signed by or on behalf of the assignor…

small winsThis decision by a County Court judge, co-opted to hear a High Court case heard in the Queen’s Bench division (rather than the Chancery Division, where specialist IP cases are usually heard), is not likely to be considered a particularly authoritative decision on this point. In IP Draughts’ view, that is a shame, as it is a sensible decision.



Filed under Intellectual Property, Legal Updates

3 responses to “Important point of law on patent assignments buried in drossy case

  1. it may not carry much weight but its such a simple point that having any judgement that states this obvious truth is useful, as I cannot count the number of times I have had to dispute the issue with other solicitors and agents both in respect of patents and trade marks. The sad thing is that it is not clear in any patent text. Hopefully the editors of the @CIPA black book will rectify that point now.

  2. vrkoven

    First, yes, in the US we have hassles (many of them), but they are never right. Their relative severity is sometimes distinguished through the use of what Mr. Spock called “colorful metaphors.”

    Second, on the assignment point, while I agree that the assignment itself shouldn’t require consideration to be effective (an assignment, as the judge danced around observing, is a thing; it’s the goods), just as no consideration is required for me to give you, were I so minded, my bottle of 1959 Château Lafite, an *agreement* to assign a patent (or copyright or trademark) does require consideration. The assignment can, of course, be the consideration on one side of the table; the dosh (including employment) is what’s on the other.

    Third, and this is purely by the way, is it customary in English judicial opinions to refer to the names of the barristers rather than those of the parties they represent? It would be most unusual to see that in a US case.

    • An intention to give and an act of giving is all that I need for you to do the right thing,and “gift” me your bottle of red wine. I hope it goes with turkey. It will save me the bother of going to Waitrose tomorrow.

      Mentioning the barristers by name reflects the clubby nature of the English bar, from which the judge will usually have come, and suggests that they are all gentlemen (or ladies) together.

      In the provincial bar (and, heaven forfend, Birmingham might come into this category) it is sometimes thought that employing a local barrister gets you a better chance of success before certain judges than one of them posh, stuck-up types from London.

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