Introduction
Assignments of intellectual property (IP) rights – patents, trade marks, copyright and designs – are routine in transactions such as mergers and acquisitions. While the underlying transfer is governed by contract law, recording the assignment with the relevant IP office is crucial for ownership, enforceability, transparency and priority. This article examines best practice procedures and potential pitfalls which may be encountered when pursuing assignments of IP in the UK, EUIPO/EPC, Germany, Spain and the US.
Why record assignments?
Recording assignments serves three main purposes:
- Protecting against subsequent conflicting transfers.
- Enabling enforcement actions in courts and before IP offices.
- Facilitating due diligence and valuation.
Failure to record can lead to disputes, loss of entitlement, loss of priority and inability to recover costs in infringement proceedings.
United Kingdom
Patents
- Assignment must be in writing and signed by the assignor.
- Assignments should be registered using a form and fee within six months of the transaction or as soon as practicable.
- If assignments are registered after six months or not as soon as practicable, costs or expenses for infringement proceedings will not be awarded to the assignee for infringement before the date of registration.
- A later transaction has entitlement over an earlier transaction if the later transacting party did not know about the earlier transaction and the earlier transaction was not registered.
- An assignment is not valid if the details of the owner of the patent or application are incorrect.
- A national professional representative does not need to be appointed but an address for service in the UK, Gibraltar or the Channel Islands should be provided.
- If patents are not assigned from an entity before the entity is dissolved at Companies House, then the ownership of these patents pass to the Crown.
Trade marks
- Assignment must be in writing and signed by the assignor.
- Agreements must contain consideration (i.e. the money that was paid, even peppercorn) unless they are written as a deed.
- An assignment of a trade mark is “a registrable transaction” within the meaning of s25 of the Trade Marks Act 1994.
- If the assignment is not registered at the UKIPO:
- It will not be effective against a third party acquiring an interest in the trade mark in ignorance of the assignment. This means that theoretically a seller could assign the same mark to someone else.
- The proprietor will not be able to recover his costs unless the application to register it is made within six months of the assignment (unless they can convince the court that it was not practicable to do this). This is the same for licensees of the new owner.
- Any licensee of the new owner will not be able to call on the proprietor to take infringement proceedings or bring the proceedings in its own name as if he were the proprietor, until the assignment has been registered at the IPO.
- If trade marks are not assigned from an entity before the entity is dissolved at Companies House, then the ownership of these trade marks pass to the Crown.
European Patent Convention and EUIPO
Patents
- Assignments must be in writing and signed by all parties.
- To record an assignment in the European Patent Register, an administrative fee must be paid and evidence of the transfer must be provided.
- Member states may have different requirements for assignment in accordance with their national laws e.g. notarisation.
Trade marks
- Assignments must be in writing and signed by all parties (except where the assignment is the result of a court decision, or a decision taken by the EUIPO).
- This formal requirement for the validity of the transfer of an EUTM is applicable irrespective of whether, under the national law governing transfers of (national) trade marks, an assignment is valid without observing a particular form, such as the need for the transfer to be in writing and have the signatures of both parties.
Germany
Patents, trade marks and designs
- The change of ownership is governed by contractual law between the parties. The registration of the transfer in the official registers has only declaratory effect. It is advisable to reflect the current ownership situation in the register in the event of any proceedings before the office, courts or future transfers.
- To record a transfer of ownership with the German Patent and Trade Mark office, a request including evidence of the transfer (a contract or a confirmatory assignment) must be filed. For recording a total transfer of a patent or trade mark, no official fee is due. Partial transfers of trade marks involve an administrative fee.
- The document evidencing the transfer must include a declaration of acceptance by the assignee.
- Signatures on the documentation are required as wet-ink signatures. Documents may be filed in digital form by a representative, however.
- A national professional representative must be appointed to file a request, if the parties are not registered in Germany or German citizens. Under such circumstances, the currently registered representative must declare to take over the representation for the new owner, or a new representative must be appointed.
- Documents may need to be translated if not filed in German, whereas documents in the English language are usually accepted.
Spain
Patents and trade marks
- To register a transfer of ownership, the following documents must be submitted:
- an application form;
- a certificate or document of transfer signed by both parties or certified copy, simple copy, or an extract of the contract authenticated by a notary or other competent public authority (foreign documents may need to be legalized, for example, by means of a Hague Apostille);
- power of attorney if the applicant is using an attorney to file; and
- proof of payment of the fee.
- The assignment only has effect vis-à-vis third parties of good faith when it has been recorded in the patent register.
- Documents not drafted in Spanish must be accompanied by a translation.
- Assignment in Spain does not require a national professional representative if the proprietor resides in Spain
United States
Patents and trade marks
- Assignments should be in writing and signed by the assignor.
- The assignment should be notarised, or at least, witnessed.
- An assignment should be recorded at the USPTO within three months from the date of assignment or prior to the date of a later transaction, otherwise a later transaction has entitlement over the earlier transaction (i.e. the earlier transaction is considered void).
Common pitfalls
- Not registering the assignment with the relevant IP office as soon as practicable
- Not obtaining all the required signatures for the assignment
Best practice
The nuances of successfully recording assignments internationally can vary from country to country and should always be considered carefully. However, in general, it is best practice to:
- always execute assignments in writing with clear identification of IP rights;
- record assignments promptly in all relevant jurisdictions;
- verify signatory authority and include necessary supporting documents; and
- maintain internal records and audit regularly.
For further guidance on how to approach recording IP assignments, please reach out to your regular Boult representative.
