Design right – Licences of Right

Licences of right are mentioned in both the Patents Act 977 and the Copyright Designs and Patents Act 1988 (CDPA88).

For design right protection, under section 237 CDPA88 licences of right are available in the last 5 years of the maximum 15 year term. In other words after 10 years anyone may have a licence to do acts that would otherwise infringe that design right. The terms may be agreed between the parties but under s237(2) the Comptroller decides the terms of the licence in default of agreement. Pursuant to this an application must be made to the Comptroller under s 247 to settle the terms of the licence. Under subsection 2 no such application may be made earlier than one year before the earliest date on which the licence may take effect.

Where the potential licensee cannot under reasonable enquiry ascertain the identity of the design right owner he may make an application under s248 where the Comptroller may make an order for a licence free of royalties or other payments. If the design right owner turns up later they may apply to alter the terms from that date.

In addition under s238 licences may be made available in the public interest by the Monopolies and Mergers Commission as of right under certain circumstances.

As a footnote, it is important to be aware that under s 254 the licensee of right may not, without the approval of the design right owner, make it known that he is a licensee, and may not claim any connection with the design right owner.

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