Thursday 23 April 2009

UNCITRAL – IP security

As previously reported on this blog, the UK's Intellectual Property Office requested comments on the latest draft Annex on security rights in intellectual property. Here are some of the comments the UKIPO has received:

1. Registration: the proposed creation of a Security Rights Register, which will increase the searching required to check the title to IP rights, will cause significant problems in identifying the parties against whom a search is made. It will also cause problems in that it is unlikely to identify the rights actually covered by the security documentation.

2. Integrity of licence terms: the possibility that a lender to a licensee may be able to obtain greater rights over the licensed IP than the rights licensed to the licensee remains a problem. There is concern that the Guide will overrule the written terms of a licence agreement, particularly in the event of insolvency and regarding termination terms.

3. Ordinary course of business: the concept of granting/taking a licence in the “ordinary course of business” referred to in the Annex is not known under IP law. There is an expectation that a buyer purchasing tangible goods in “ordinary commerce” under an authorised transaction takes the goods’ title free of any prior claims. For IP assets however, there usually is a common understanding that the use of the IP may be subject to some other, pre-existing rights.

For those who want to spot more issues, the Annex is available on the UNCITRAL website.

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