Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

Intellectual Property (2nd edition)

Japan Small Flag Japan

Assignments of patents, utility model rights, trademark rights and design rights do not take effect until such assignment is registered.

UAE Small Flag UAE

Rights

Requirements for an assignment agreement to be valid

Requirement to register an assignment with the Ministry of Economy

Consequences if no registration

Patents (national) and utility certificates

· In writing and signed by both parties

· Notarised (and Legalised where notarised outside the country)

· Both registrations and applications may be assigned

YES

The assignment will not be effective against third parties, until or unless it is recorded against the registration(s).

This will mean the new owner will not be able to licence or assign the mark, or enforce the rights in its name, until or unless the assignment is recorded.

Designs

Patent (GCC patent filing)

· In writing and signed by both parties

· Notarised (and Legalised where notarised outside the country)

· Both registrations and applications may be assigned

YES

Trade marks

· In writing and signed by both parties

· Notarised (and Legalised where notarised outside the country)

· Both registrations and applications may be assigned, but assignments can only be recorded against registered marks.

YES

Copyrights & neighbouring rights

· In writing and signed by both parties

· Shall expressly specify the rights assigned, as well as

· the period of exploitation

· the purpose for which the rights are assigned and

· the territory of the assignment.

· The UAE Copyright law contains a provision that deems any disposal of the author's future intellectual rights in five or more future works to be null and void.

· Moral rights are personal and cannot be assigned. An author may only undertake in writing not to exercise his/her moral rights in relation to a specific person or entity, provided that the agreement specifies the work(s) and specific uses to which the undertaking applies. The more detailed these provisions are, the greater the likelihood that they will, if challenged, prove valid and enforceable in court.

NO

The assignment may be registered provided that the work, the copyrights of which are being assigned, has itself been registered with the Ministry of Economy.

N/A

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Consequence of failing to register

Patents

1)  Original document or certified copy of the assignment agreement.

2)  Spanish translation (if required);

3)  Recordal application stating forth:

  I)  Names and nationalities of both parties;

  II)  Invention’s details;

  III)  New domicile to receive further notifications;

  IV)  If any, name of the new appointed legal representative; and

  V)  Official fees paid.

The assignment agreement will not have legal effects against third parties.

Utility models

Industrial designs

Integrated circuits

Trade secret

N/A

N/A

Brands

IP right

Requirements

Consequence of failing to register

Trademarks

1)  Original document or certified copy of the assignment agreement.

2)  Spanish translation (if required).

3)  Recordal application (official form) stating forth:

  I)  Names and nationalities of both parties;

  II)  Invention’s details;

  III)  New domicile to receive further notifications;

  IV)  If any, name of the new appointed legal representative; and

  V)  Official fees paid.

The assignment agreement will not have legal effects against third parties.

Trade names

Slogans

Appellations of Origin

N/A

N/A

Geographical Indications

Copyright and other rights

IP right

Requirements

Consequence of failing to register

Copyright

1)  Original document or certified copy of the assignment agreement;

2)  Parties’ IDs;

3)  Spanish translation (if required);

4)  Recordal application; and

5)  Official fees paid.

The agreement will not be presumed valid.

Related rights

N/A

 

Reservation of rights

1)  Original document or certified copy of the assignment agreement;

2)  Parties’ IDs;

3)  Spanish translation (if required);

4)  Recordal application; and

5)  Official fees paid.

The assignment agreement will not have legal effects against third parties.

Plant varieties

1)  Original document or certified copy of the assignment agreement;

2)  Parties’ complete name, nationalities and domicile;

3)  Letter signed by the new owner stating that he will maintain the characteristics of the subject plant variety;

4)  Spanish translation (if required);

5)  Recordal application; and

6)  Official fees paid.

The assignment agreement will not have legal effects against third parties.

India Small Flag India

Patents:
The Indian Patent Act requires that the assignment of the patent rights must be recorded in the prescribed format. To avoid any dispute regarding the ownership of the application, it is mandatory to register assignments in the Patent Office. Non-filing of assignment may lead to difficulties in enforcement of the patent right.

Trademarks: The Trade Marks Act mandates that assignment is to be recorded in the Register. To avoid any dispute regarding the ownership of the trade mark, it is mandatory to register assignments in the Trade Marks Office. Non-filing of assignment may lead to difficulties in enforcement of the trademark right.

Copyright: in cases of registered copyright, assignee is to make an application for registration of changes in the particulars of copyright entered in the Register of Copyrights.

Designs: The Indian Design Act mandates that the assignment is to be recorded in the Register if there is a change in ownership. The subsequent owner shall file a request with the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarised copy of the instrument embodying the terms and conditions governing the rights and obligation of the parties has to be registered and is required to be enclosed with the application.

Any contravention of this requirement will render the instrument invalid and may lead to difficulties in enforcement of the IP right. To avoid any dispute regarding the ownership of the application, it is mandatory to register assignments in the Patent Office.

Updated: June 15, 2018