Legal Applications in Technology - Analyze the legal and professional impact of Transfer of Patent license within a typical commercial setting - By Hansa Edirisinghe

1. Legal Applications in Technology
Analyze the legal and professional impact of Transfer
of Patent license within a typical commercial setting
Hansa K. Edirisinghe
BSc (Hons) University of Portsmouth, UK
MSc IT - Cardiff Metropolitan University, UK

2. Why did I select this topic ?
• Within the last decade, there has been an
explosive growth in the importance of
intellectual property (IP) as a corporate asset.
• Patent license has a high commercial value
• Obtaining or transferring patent ownership
could impact the commercial setting.
• Facts find, the patent Infringement occur due
to unconditional assignments

3. What is Patent license?
• Form of intellectual property
• Provides legal right to exclude others from
performing certain activity in the country of issuance
• Thus, it prevents others from
•
•
•
•
making,
using,
selling or
distributing
the patented invention without permission for a
fixed period

4. The Law & key points of patent
license
• Comes under Intellectual property act, No. 36
of 2003 of Sri Lanka
• Ownership could be individual or join
• Duration : 20 years after the filing date of
application
• The owner of the patent can use, sell or
license the patented technology and derive
financial benefits

5. Transfer of Patent license The Legal and professional impact
• Patent can be assigned or transmitted
• Should be in writing signed by or on behalf of
the contracting parties
• 4 Types of patent transfer for commercial
purposes
1.
2.
3.
4.
Royalty basis
Lump-sum sales price
Startup Companies
Work-for-Hire

6. Transfer Patent ownershipAdvantages
• Royalties – receiving royalty payments during
the validity period of patent
• Lump-sum sales price – assignee has to pay
the total price on royalty basis or once
• Startup Companies – Venture capitalist invest
for the invention
• Work-for-Hire – employee can demand for the
salary

7. Transfer Patent ownership Disadvantages
• Royalties – No authority to cancel the patent
rights in case of failure of royalty payment
• Lump-sum sales price – Cannot profit if the
invention produces more royalties than he
thought it would
• Startup Companies – patent ownership goes
to venture capitalist for a period
• Work-for-Hire – ownership does not belong to
the inventor (employee)

8. “Patent license Transferring in a typical commercial setting”
Evaluation
• Every transfer type does not suite for every
commercial setting
• Discuss the potential advantages and
disadvantages
• Evaluate suitable transfer type under different
set ups.

9. My approach on study
• Pertaining to literature of the subject
– National Intellectual Property Office Sri Lanka
– World Intellectual Property Organization (WIPO)
– Online journal articles
• Identify the legal and professional aspect of
Patent Transfer
• Analyze how does it impact within a typical
commercial setting

10. Framework of my Report
“Analyze the legal and professional impact of Transfer of Patent license
within a typical commercial setting”
1) Introduction
1) Literature review
2) Formulating the research problem
3) Research methodology
4) Hypothesis
5) Scope and limitations
2) Presentation and Analysis of Data
1) Patent License and patent ownership
2) Law behind transfer Patent ownership
3) A discussion of today’s typical commercial setting
4) The Potential for legal and professional impact on Transfer of Patent
license
5) Detailed analysis of the legal impact
6) Detailed analysis of the professional impact
3) Conclusions and Recommendations

11. Thank You