What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?

Intellectual Property

Singapore Small Flag Singapore

Save for geographical indications which cannot be assigned, a validly signed assignment agreement in writing is required to assign ownership of each of the intellectual property rights described above.

France Small Flag France

Patent (ICP art. L.613-8) and trademark (ICP art. L.714-1) assignments must be in writing to be valid.

A writing is not mandatory to assign a design although it is required to be enforceable against third parties (IPC art. R.512-15).

For copyright, only publishing agreements, performance agreements and audio-visual production agreement (IPC art. L.131-2) must be in writing.

However, the IPC art. L.131-3 requires to define precisely the assigned rights in terms of scope and purpose, territory and duration, making a written agreement highly recommended, it being specified that, pursuant case-law, these provisions apply only to the original author and natural person.

Portugal Small Flag Portugal

R: A written document between the Assignor and the Assignee is the only requirement to assign the ownership of each intellectual property right.

India Small Flag India

Patent:
The rights of a patentee can be assigned through an assignment deed to the assignee. The deed is to be in writing and signed, duly notarised, and registered as per the national laws. Further, it is essential to get the assignment recorded with the Indian Patent Office.
Confidential information/know-how: would depend on the contractual relationship between the parties.

Trade mark/collective mark/certification mark:
Assignment of trademark can be made by making a request on the requisite Form, along with the deed of assignment and an affidavit each from the Assignor and the Assignee.

An assignment application has to contain full particulars of the instrument, if any, under which the applicant claims to be entitled to the trade mark and such instrument or a duly certified copy thereof has to be produced at the Trade Marks Registry for inspection at the time of application. The Registrar may require and retain an attested copy of any instrument produced for inspection in proof of title.

An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.

Copyright:

  • The Agreement should be in writing and must be signed by the Assignor as well as the Assignee;
  • The rights assigned along with duration and territorial extent must be clearly established;
  • The amount of royalty or any other consideration payable must be clearly specified;
  • The Assignee must exercise the rights assigned to him within one year of the date of assignment, otherwise such assignment shall be deemed to have lapsed unless there is some provision to the contrary in the agreement;
  • If the period of assignment is not mentioned, then it shall be for 5 years;
  • Similarly, if the territorial extent is not mentioned, it shall be presumed to extend within India.

Designs:
The rights vested by design registration can be assigned through assignment, agreement, transmission, with terms and conditions in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and conditions of the contract/agreement etc.

The deed is to be in writing and signed, duly notarised, and registered as per the national laws and is to be filed with the Controller within a period of one year from the date of execution of the instrument.

Greece Small Flag Greece

Registered intellectual property rights, know-how, as well as copyrighted works are assigned via a written contract. The assignment of other intellectual property rights does not require a written contract, although, for obvious reasons, a written contract is highly advisable.

Japan Small Flag Japan

For Patents (including utility model rights), registered trademarks and design rights, registration with the JPO is required; for copyrights, trade secrets and confidential information, no registration or other formality is required. Note that, to assert a copyright assignment against a third party, registration with the Agency for Cultural Affairs is required.

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Patents

Written assignment agreement (signed by both parties)
stating forth:

1) Names and nationalities of both parties, and

2) Invention’s details.

Finally, get the assignment agreement recorded by the
Mexican Patent and Trademark Office.

Utility models

Industrial designs

Integrated circuits

Tradesecret

Written assignment agreement, signed by both parties,
stating for the relevant trade secret and all the mechanism
and measures to keep the confidentiality of such
information.

Brands

IP right

Requirement

Trademarks

Written assignment agreement (signed by both parties)
stating forth:

1) Names and nationalities of both parties, and

2) Sign’s details.

Finally, get the assignment agreement recorded by the
Mexican Patent and Trademark Office.

Trade names

Slogans

Appellations of Origin

N/A

Copyright and other rights

IP right

Requirements

Copyright

Written assignment agreement (signed by both parties)
stating forth:

1) Names and nationalities of both parties;

2) Work’s details;

3) Agreed remuneration; and

4) Validity term.

Related rights

N/A

Reservation of rights

Written assignment agreement (signed by both parties)
stating forth:

1) Names and nationalities of both parties, and

2) Reservation of rights’ details.

Finally, get the assignment agreement recorded by the
Mexican Copyright Office.

Plant varieties

Written assignment agreement (signed by both parties)
stating forth:

1) Names and nationalities of both parties, and

2) Plant varieties’ details.

Such agreement shall be executed before a Public Notary.

Finally, get the assignment agreement recorded by the
Mexican Service Seed Inspection and Certification.

China Small Flag China

Patent assignments must be in writing, stating the names of the parties, defining the rights and then filed at SIPO.

Trademark assignments must be filed at the CTMO and take effect from the date they are published by SIPO or published in the Trademark Gazette.

There is no requirement to register a copyright assignment.

United Kingdom Small Flag United Kingdom

In general, in order for an assignment of IP rights to be effective under English law, it must be made in writing and signed by the IP owner (assignor). In some cases, for instance, to assign certain European rights including EU trade marks, EU (Community) designs and European patent applications, the assignment must also be signed by the recipient (assignee). It is therefore usually advisable for any document assigning IP rights to be signed by both the assignor and the assignee. If the IP right is jointly owned, in order to assign the whole of the right, each of the joint owners must sign the assignment.

It is possible in respect of some rights to have a partial assignment, but the position is complex.

Updated: June 23, 2017