Patent Prosecution Matters

Recording Assignments At Patent Offices

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16 June, 2021

Patents and patent applications are a form of intellectual property – this allows them to be owned and transferred between parties, just like other forms of property.

Patent offices around the world, including the United Kingdom Intellectual Property Office (UKIPO) and the European Patent Office (EPO), maintain a register of patents (and patent applications) and their respective owners. When a patent or patent application is assigned to a new owner, the named proprietor on the register can be updated by filing a request with the relevant patent office. It is also possible to record other patent-related transactions, such as mortgages or licences.

Why is it important to record an assignment at the Patent Office?

It is recommended to record an assignment as soon as possible, as there may be negative consequences of delaying doing so. For example, although there is no statutory requirement to record an assignment against a UK patent, if an assignment is not recorded within six months then the assignee may not be able to claim costs or expenses in infringement proceeding for an infringement that occurred before the assignment was recorded.

It is also beneficial to record any assignments of European patent applications at the EPO. This is because, once granted, a European patent is validated as separate national patents. Recording a single assignment for one application in the European phase is therefore much cheaper and more efficient than doing so in multiple patent offices after grant.

Depending on the jurisdiction, there may be a requirement to record of an assignment against foreign patents and/or patent applications.

What is required to record an assignment?

Requirements for recording an assignment vary by jurisdiction, but in general a form needs to be filed giving details of the assignee, together with payment of a fee. Evidence of the transfer may also be required, such as a copy of a signed assignment document. It may be necessary to indicate the authority of the signatory on the assignment, by stating the signatory’s job title (e.g. director).

Is there anything else that I need to know?

It is important to note that the assignment of patents and patent applications may be subject to stamp duty in the UK. This will depend on the date of the transfer and whether any real property (e.g. land, buildings, etc.) or any stocks or shares in a business entity were transferred together with the IP. When recording the assignment at the UKIPO you will need to indicate either that stamp duty is not payable, or that all necessary stamp duty has been paid.

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