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IP Recordals: The Critical Transfer of Intellectual Property

Apr 13, 2021

While it can be tempting to think of an IP portfolio as an asset that takes care of itself, the reality is not so simple. The fees, procedures and required documents vary from country to country. Furthermore, if a change in company name or a merger/acquisition (M&A) takes place and the event is not properly recorded in all the countries where IP ownership is claimed — it won’t be possible to take action against potential infringers.

Managing the IP recordals process requires a comprehensive knowledge of all relevant local regulations, timetables, and fees. Local IP agents must be identified, hired, and overseen in each jurisdiction – and if the IP portfolio includes numerous countries, it can make in-house management of the process prohibitively time-consuming. Imagine coordinating with over 100 different patent agents if you need to record a change in ownership for a PCT patent.

Morningside has a system in place with a global network of reliable patent agents who can record the change of ownership of patents and trademarks anywhere in the world. We have the necessary experience and connections to streamline the process and significantly reduce your administrative burden. Consolidating the recordals process through one provider also makes it possible for your firm to receive volume discounts and save on fees wherever possible.

With this in mind, we would like to share some helpful information to make your recordals project go as smoothly as possible.

Planning a recordal project

  • An assignment form should include a schedule listing all related patents that are also being assigned. Be sure to include the entire portfolio being transferred, including any national phase patents based on a PCT application and the EP validation states based on an EP patent.

 

  • Consolidate your assignments projects: Many regional patent offices provide reduced rates for bulk requests for change in a single jurisdiction, as long as the assigning parties are identical.

 

  • Some jurisdictions require various degrees of legalization of the assignment form. These should be identified and their forms prioritized to avoid project delays.

 

  • In many cases, assignment translation and certification requirements can be avoided by having the agent prepare a fresh assignment best suited for the jurisdiction requirements.

A recordal in one jurisdiction may go a long way

  • When transferring ownership during the international PCT stage, it’s always best to record the change for the PCT application prior to national phase entry. The updated applicant will automatically be recognized by subsequent national patent offices.

 

  • The EPO assignment recordal may also be used in some validation states. Therefore, if a change in ownership occurs during the prosecution of an EP application, it is best to record it with the EPO prior to the grant of that patent. Note: In some EP states, the change will take effect automatically based on EPO Form 2544.

 

  • In some cases, an assignment recorded with the USPTO can be used to record the assignment in other jurisdictions (one example is Canada).

Constructing assignments

  • Each assignment document must exactly match the applicant/patentee details as listed in the patent registration, including their address.

 

  • Some jurisdictions require the assignment form to mention a monetary sum for consideration. The sum could be as low as $1.00 USD. For example, the form may contain text such as: “In consideration of the sum of $1.00 USD (receipt of which is hereby acknowledged), the Assignor hereby transfers to the Assignee all rights in the Patent.” Adding this section to the assignment may save the need to execute updated forms later on.

 

  • In some cases, multiple changes need to be recorded due to several changes in ownership. If that happens, it’s important to ensure that the entire chain of ownership is recorded. This will ensure that the entitlement to the patent will not be contested by a third party.

Smart signing

  • It’s best to have all forms ready and then executed (signed) by all the required signatories at the same time in a single meeting.

 

  • Some jurisdictions require an original assignment agreement, so make sure to print and sign several copies of this document at the same time. This will ensure that you have multiple original hard copies to forward to the necessary jurisdictions. Getting additional forms signed later, after M&A, can be difficult or impossible since the original assignee may no longer be available or may no longer be entitled to sign.

Making a complicated process as simple as possible

The preparation of an IP portfolio and its transfer, however inherently complex, doesn’t have to be a nightmare. With some thoughtful planning and with the right team, the recordals process can be successfully executed in an efficient, cost-effective, and timely manner.

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