Section 33: Effect of registration, etc on rights in patents
Sections (33.01 - 33.06) last updated: April 2008.
Assignments and other transactions, instruments or events affecting rights in or under patents and applications may be entered in the register of patents once the patent application in question has been published. Also, where the comptroller is notified of such a transaction, instrument or event prior to the application being published, the comptroller may, in accordance with rule 55(g), make that information public. An application to register, or to give notice to the comptroller of, any such transaction, instrument or event should follow the procedure prescribed by r.47, see 32.08-10 Section 33 concerns the effect of such registration or giving of notice on the rights in question.
(s.77(1), s.78(2) s.78(3)(f) is also relevant)
Section 33 applies in relation to not only 1977 Act patents and applications but also granted European patents (UK) and applications for European patents (UK). Registration of an application for a European patent (UK) in the Register of European Patents kept by the EPO is treated as registration under the 1977 Act, see 32.07 , 78.06 and 78.07.
|Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction, instrument or event to which this section applies shall be entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction, instrument or event to which this section applies if, at the time of the later transaction, instrument or event -
(a) the earlier transaction, instrument or event was not registered, or
(b) n the case of any application which has not been published, notice of the earlier transaction, instrument or event had not been given to the comptroller, and
(c) in any case, the person claiming under the later transaction, instrument or event, did not know of the earlier transaction, instrument or event.
The transactions, instruments or events (hereinafter termed “transactions etc”) to which this section applies are defined by s.33(3). A person acquiring the property in a patent or application by virtue of any such transaction etc is entitled as against any other person who claims to have acquired that property by virtue of an earlier such transaction etc if two conditions are met at the time of the later transaction etc. One condition is that the earlier transaction etc was not registered or (if it relates to an unpublished application) notice of the earlier transaction etc had not been given to the comptroller. The other condition is that the person claiming under the later transaction etc did not know of the earlier one.
|Subsection (1) above shall apply equally to the case where any person claims to have acquired any right in or under a patent or application for a patent, by virtue of a transaction, instrument or event to which this section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction, instrument or event to which this section applies .|
The entitlement to which s.33(1) refers applies even if the right claimed under a later such transaction etc is incompatible with a right acquired under an earlier one.
|This section applies to the following transactions, instruments and events -
(a) the assignment or assignation of a patent or application for a patent, or a right in it;
(b) the mortgage of a patent or application or the granting of security over it;
(c) the grant, assignment or assignation of a licence or sub-licence, or mortgage of a licence or sub-licence, under a patent or application;
(d) the death of the proprietor or one of the proprietors of any such patent or application or any person having a right in or under a patent or application and the vesting by an assent of personal representatives of a patent, application or any such right; and
(e) any order or directions of a court or other competent authority
(i) transferring a patent or application or any right in or under it to any person; or
(ii) that an application should proceed in the name of any person;
and in either case the event by virtue of which the court or authority had power to make any such order or give any such directions.
|Where an application for the registration of a transaction, instrument or event has been made, but the transaction, instrument or event has not been registered, then, for the purposes of subsection (1)(a) above, registration of the application shall be treated as registration of the transaction, instrument or event.|
If the making of an application for registration of a transaction etc has been recorded in the register (see 32.09), it is immaterial for the purposes of s.33(1)(a) whether or not the transaction etc has actually been entered in the register at the time of a later transaction etc. Thus for determining the entitlement to which s.33(1) refers, registration of the making of the application is deemed to constitute registration of the transaction etc.
Article 33 of Council Regulation (EC) No. 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters requires EU member states to recognise judgments given in other member states without further proceedings. This applies unless the judgment is irreconcilable with an earlier judgment between the same parties in the UK or an earlier judgment in another member state able to be given recognition. Denmark is not covered by this Regulation, but is party to the Brussels Convention, and Iceland, Switzerland and Norway are signatories of the Lugano Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters, which makes similar provisions. Therefore an application to enter a court order on the register transferring a patent or application, or stating that the application is to proceed in the name of another person, made by a court in the European Economic Area, should be accepted unless it cannot be reconciled with an earlier court order.
In Molnlycke AB and another v Procter & Gamble Ltd and others  RPC 49 at page 138 the Court of Appeal rejected the argument that entry in register of a notice that a s.32 application had been filed was equivalent to registration. The purpose of subsection (4) is to secure priority for a person who claims an interest in a patent and seeks registration. It is not to substitute for the requirement of registration of the particular transaction or instrument a lesser requirement that an application has been made for registration of an unspecified transaction or instrument.