In the case of QR Sciences Ltd v. BTG International Ltd. [2005], the defense company BTG [purchasers of intellectual property and technology rights, in particular patents] granted an exclusive license to QR Sciences [an Australian company] in September 2002. . Use a large number of patents that exist in many different countries.
The terms of the license agreement grant QR Sciences the right to transfer patents under certain circumstances. Article 14.4 of the License states: "By the terms of the license, BTG will not transfer any patent without first proposing the transfer of such patent to QRS".
In March 2004, BTG notified QR Sciences that it was negotiating a patent transfer by a third party. QR Sciences began to file a lawsuit against BTG. QR Science believes that when BTG proposes a patent transfer and BTG waives a patent, Article 14.4 applies, and the court should explain that the clause has this meaning.
The following problems exist in the action: -
Whether the BTG negotiations triggered the QR Science Rights under Article 14.4; whether the BTG's proposal for QR Science in March 2004 removed BTG's obligation to first patent the QRS. Court rules: -
Negotiations between BTG and third parties regarding the transfer of patents did not trigger the rights under QR Sciences' Article 14.4. If the negotiations involve a waiver of the patent, QR Sciences may enforce its rights under the terms; the BTG proposal is based on the contract and is therefore not a contract offer, but merely an invitation; BTG has not fulfilled its contractual obligation to make an offer to QR Sciences for the first time; Any quotes BTG provides to QR Sciences must be contract quotes, and QR Sciences has reasonable time to consider and respond to quotes.
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©RT COOPERS, 2005. This briefing does not provide a comprehensive or complete statement of the law on the issue in question, nor does it provide legal advice. It is only used to highlight general issues. Expert legal advice should always be provided for specific situations.
Orignal From: Intellectual Property Law - Patents - Patent Transfer
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