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.

Philippines Small Flag Philippines

The assignment of a patent and the invention covered thereby may be of the entire right, title or interest, or of an undivided share of the entire patent and invention, in which event the parties become joint owners thereof. An assignment may be limited to a specified territory. To effect the recordal of the assignment with the IPO, a request for recordal must be filed with the IPO together with a certified true copy of the assignment. The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer oaths or perform notarial acts, and certified under the hand and official seal of the notary or such other officer. The same rules apply to the assignment of utility models and industrial designs.

An application for registration of a trademark or its registration may be assigned or transferred with or without the transfer of the business using the mark. The assignment shall be in writing and requires the signatures of the contracting parties. To effect the recordal of the assignment with the IPO, a request for recordal must be filed with the IPO together with a certified true copy of the assignment document.

A copyright may be assigned in whole or in part. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention.

United States Small Flag United States

(a) Patents
35 U.S.C. § 261 governs assignments of patents and patent applications, which must be in writing. The general rules of a contract apply, including the requirements for mutual assent, consideration, legal purpose and legally competent parties.

(b) Trademarks
A trademark assignment must be in writing “duly executed” and must include the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of an symbolized by the mark. The general rules of a contract apply, including the requirements for mutual assent, consideration, legal purpose and legally competent parties.

An intent-to-use application cannot be assigned until an allegation of use has been filed in the USPTO, unless the assignment is made to a successor to the business of the applicant, or the portion thereof to which the mark pertains.

15 U.S.C. §1141 applies to assignment of an extension of protection to the United States of an international registration may be assigned, together with the good will associated with the mark, only to a person who is a national of, domiciled in or has a bona fide and effective industrial or commercial establishment in a country that is either (1) party to the Madrid Protocol or (2) a member of an intergovernmental organization that is a party to the Madrid Protocol.

(c) Copyrights
Any or all of the copyright owner’s exclusive rights or any subdivision of those rights may be transferred (assigned or licensed). The transfer agreement must be in writing and signed by the owner of the rights being conveyed or such owner’s duly authorized agent. A nonexclusive transfer does not require a writing.

(d) Trade Secrets
Trade secrets can be assigned to another. General contract rules apply to such assignments including the requirements for mutual assent, consideration, legal purpose and legally competent parties.

Germany Small Flag Germany

Patents, utility models, know-how, trade marks, registered designs, semiconductor topography rights and plan variety rights can be freely assigned to any third party. The assignment of German intellectual property rights does not require a written or other special form to be valid and can even be based on oral agreements. However, assignments should always be in writing and recorded for the purpose of evidence and clarity.

Company names are assigned when transferring the business in total; they cannot be isolated from the company. Work titles are also transferred together with the work.

According to Section 29(1) Copyright Act, the copyright cannot be assigned, but only be inherited, Section 28 Copyright Act. Instead of an assignment, parties usually grant exclusive licenses to the broadest extent possible.

Switzerland Small Flag Switzerland

The intellectual property rights can be assigned except for certain personal rights (morals rights) such as the right to be named as the inventor (patents) or the right to recognition of authorship, and the integrity of the work (copyright).

The assignment of ownership of trademarks, patents and designs requires a written contract in the case of an assignment of trademarks, patents and designs. No such requirement exists for copyrights although for purposes of proof of title a written assignment agreement is highly recommended. POA and PGI cannot be assigned as such as they are tied to a specific product and not to a specific owner.

The assignment of domains is subject to the terms and conditions of the registrar.

Ukraine Small Flag Ukraine

The assignment deed shall be concluded in written form. With regards to registrable IP objects, the assignment shall be registered with relevant state authority.

Bibliography in the assignment regarding registrable intellectual property objects and details of their owners, should be in compliance with the State Register data. In case of signature of the document by person according to Power of Attorney or authorized representative, a document which confirms an empowerment is required.

Additionally, original Power of Attorney signed by the assignee is required for non-residents of Ukraine.

Alterations in documents such as assignment deed and the PoA are not acceptable.
In case of copyright assignment, assignment registration is required with regard to registered copyrighted objects. Otherwise, assignment registration of copyrighted object is voluntary.

The assignment of a trade name, designation of origin, geographical indication, is only possible within the framework of assignment of business as a whole or part of the business that is linked to the use of the subject trade name, designation, indication.

Turkey Small Flag Turkey

Industrial property rights can be assigned with the exception of geographical indications and traditional product names. The assignment should be documented in writing and certified by a notary.

Sweden Small Flag Sweden

(a) Patents, trademarks, trade names, designs, plant variety rights
As described under B above, patents, trademarks, trade names, designs and plant variety rights are registered rights. and may be assigned. This may be done by way of any agreement valid under Swedish law. If an entity is sold, the rights owned by the entity will also be transferred to the purchaser along with the entity. The registers for each right may be update to reflect licensing of a right, however this is not a requirement.

Trade names may not be assigned under Swedish law other than through acquisition of shares of a company, where the trade name will be automatically transferred.

(b) Copyright, topographies for semiconductor products
As Swedish copyright is not registered there are no requirements to register assignment of copyright. Copyright is assigned through common agreement.

Topographies for semiconductor products are assigned through any agreement valid under Swedish law.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:
The assignment of patent rights must be made in writing when performed inter vivos.

TRADEMARKS:
There are no particular requirements to assign the ownership of a registered trademark.

DESIGNS:
To be valid, the assignment of design rights must be made in writing when performed inter vivos.

COPYRIGHTS:
The exploitation (economic) rights over copyright are transferrable. It is compulsory that the assignment is made in writing, explicitly establishing the rights that are being transferred as well as the time and the territorial scope of the transfer.

For the assignment to be exclusive, exclusivity needs to be expressly stated in the agreement. Exclusive assignments impede assignor to use the assigned work and allows assignee to grant non-exclusive licenses to third parties (unless otherwise agreed). Exclusive assignee needs the assignor consent to assign such right.

If the time or the territorial scope are not specified in the contract, the transfer will be for five years and in the territory of the country where the contract is signed.

The transfer regarding rights on future works would be invalid. Moral rights are not assignable.

Israel Small Flag Israel

Patents:
Upon filing the Israeli application, one should indicate whether the rights of ownership are being transferred by an assignment or by employment. There is no need to submit a written assignment to the Israeli Patent Office.

Designs:
The assignment of rights must be submitted to the Registrar of Patents. Non-registration means that the assignment of rights is valid only between the parties.

Copyrights:
A contract for the granting of a unique or exclusive license requires a written document.

Trademarks:
In order to record an assignment of rights, a suitable request in writing needs to be submitted with the ILPTO. This request must include an original Deed of Assignment that includes a statement that to the best of the assignor’s knowledge the record of the assignment will not cause confusion amongst the public. If such a statement is not indicated in the deed of assignment document, a separate suitable affidavit may be provided.

Updated: August 23, 2017