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)

Russia Small Flag Russia

Assignment of registered rights must be registered with Rospatent. Failure to register a patent or trademark assignment will result in the assignment not taking effect and being invalid against any third party.

To accomplish the registration of the assignment, a notification, and not the assignment agreement itself, can be submitted to Rospatent. It has to be signed by both parties.

Assignment of unregistered rights (e.g. copyright and neighbouring rights) is not subject to registration.

China Small Flag China

Trademarks: Failure to register an assignment of trademark will result in an ineffective assignment.

Patents: Registration is essential for a patent assignment to take legal effect. The assignment only becomes legally effective from the date of registration.

France Small Flag France

In France, registering an assignment is not mandatory. However, an assignment is only enforceable against third-parties if it is registered with the French Office. The assignment can be registered by any party to the agreement by filling a specific form before the French Office together with a copy of the assignment, the relevant clauses or a confirmatory assignment signed by both party. If the assignment has been drafted in a foreign language, a French translation must be provided.

See for:

  • patents: Article L.613-9 of the IPC;
  • designs: Article L.513-3 of the IPC;
  • trademarks: Article L.714-7 of the IPC.

Switzerland Small Flag Switzerland

Only for guarantee or collective marks. Failing to be registered, the assignment of a guarantee or collective marks will not be valid. Otherwise, there is no requirement to register the assignment. However, if the assignment is not registered, it will not be enforceable against a third party having acquired rights to the intellectual property in good faith (without knowledge of the assignment).

Poland Small Flag Poland

There is no strict requirement to register the assignment of any of the registered intellectual property rights with the Patent Office. However, such assignment is not effective towards third parties unless it is recorded in the registry.

Italy Small Flag Italy

According to Article 138 IPC, any IP rights assignment must be recorded with the IPTO. Without recording (at least according to the main interpretation), any agreement is enforceable and binding for the signing parties, but the record is required in order to be the assignee capable of exercising the rights arising under the IP rights also against third parties. Registration is therefore strongly recommended in any scenario. The recording procedure has become easier (in connection with the assignment agreements) under the IPC. Under the IPC, as a fall-back option it is possible to file a declaration in place of filing a copy of the agreement (dichiarazione di avvenuta cessione), even though the IPTO may also require that the declaration is notarised by a public notary and subsequently legalised.

As for copyright, although Italian law does not require a specific or pre-defined type of contract in order to transfer/license/sale copyrights, normally the transfer of the rights must be evidenced in writing pursuant to Article 110 ICL.

Cyprus Small Flag Cyprus

For Patents (and SPCs), Trade marks, Certification marks and Designs, assignment must be recorded otherwise it is not actioned.

Israel Small Flag Israel

Patents and designs:
The ownership of design and patents are officially recorded at the Patent Office. The transfer of rights in a patent or design may be done in writing and should be recorded in order to be valid against third parties.

Trademarks:
The assignment should be recorded with the ILPTO as soon as possible, or any use of the mark by the assignee may not be attributed to the assignee, which may lead to non-use cancellation actions.

Chile Small Flag Chile

Although the contract for the transfer of all the intellectual property rights indicated above is valid even if it has not been recorded in the margin of the respective registration, it is necessary for the contract to be registered with the respective administrative authority so that it can be opposed by third parties.

Greece Small Flag Greece

The assignment of registered intellectual property rights must be recorded at the Greek Trademark Office (trademarks) or the Greek Patent Office (patents, SPCs, utility models, registered designs, know-how). Although, between contracting parties, the agreement comes into force on the date of the signature, it is only effective against third parties upon its recordal. Consequently, failure of recordal results in relative nullity in favour of third parties, who are not aware of the assignment. The assignment of know-how is also compulsory, but only for the contracting party that resides or has its registered seat in Greece.

United Kingdom Small Flag United Kingdom

There are no specific requirements to register assignments of IP rights in the UK. However, registration is advisable because unless assignments are registered, they will not bind a third party who later acquires, in good faith, a conflicting interest in the right (a duplicative assignment).

If a patent or trade mark assignment is not registered within 6 months of it taking place (or as soon as practicable thereafter), then if the patent or trade mark were to be infringed by a third party, the failure to register the right in time may prevent the new owner recovering its costs of infringement proceedings.

In respect of UK registered designs, where the assignor owns both the registered and unregistered rights in a design, there is an assumption that assigning the unregistered right also assigns the registered right.

Pakistan Small Flag Pakistan

It is not mandatory to register an assignment of any of the intellectual property right. However in case of non-recordal of assignment, assignee may face difficulties while enforcing or defending its right in relation to third parties.

Ecuador Small Flag Ecuador

No.

United States Small Flag United States

Registration or recordation of an assignment is not required for patents, trademarks, copyrights or trade secrets, but there are benefits of doing so for patents, trademarks and copyrights.

Malaysia Small Flag Malaysia

No statutory penalties but no assignment shall have effect against third parties unless so recorded in the Register.

Philippines Small Flag Philippines

The IPO shall record assignments, licenses and other instruments relating to the transmission of any right, title or interest in and to inventions, and patents or applications for patents or inventions to which they relate, which are presented in due form to the IPO for registration. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice, unless so recorded in the IPO, within three (3) months from the date of said instrument, or prior to the subsequent purchase or mortgage. The same rules apply to utility models and industrial designs.

Assignments and transfers of registrations of trademarks shall be recorded with the IPO upon payment of the prescribed fee. Assignments and transfers not so recorded shall have no effect against third parties.

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.

Sweden Small Flag Sweden

See answer to 11 above. There is no sanction or other consequence for failing to register an assignment.

Latvia Small Flag Latvia

Patents - The successor in title of the registered design must inform the Latvian Patent Office on the change in respect ownership and register it. The person who has been entered into the Patent Register shall be considered the owner of the patent. Until the fixing of the change of the owner of the patent in the Patent Register, the successor of the right may not utilise the right resulting from the acquisition of a patent against third person.

Trade mark – The owner of the mark must immediately inform the Latvian Patent Office on any change in respect of trademark ownership and register it. If the change in ownership is not timely registered the owner of the mark may encounter problems in case it is necessary to prove the ownership during any further proceedings.

Registered designs - The successor in title of the registered design must inform the Latvian Patent Office on the change in respect ownership and register it. The person, who has been entered in the Register as the owner of a design, shall be considered the owner of the design. Before the change of an owner is entered in the Register, the successor in title may not exercise the rights arising from the registration of the design.

Copyright (including database rights) – No.

Germany Small Flag Germany

Registration is not required for the validity of an assignment. However for registered rights, the respective registers grant a legal presumption of the validity and ownership, as well as of the exclusive right to use the protected IP right. Also, pending recordal of the assignment, the new owner may not be able to conduct certain proceeding before the German Patents and Trademarks Office. It is therefore advisable to register the assignment.

Malta Small Flag Malta

Yes, for each of the registered IPRs, the law requires the registration of¬¬ the assignment. The Maltese IPRD is furthermore requiring the submission of the POA to the trade mark attorney filing the assignment together with notarised proof of the documentation regarding the transfer. This is being requested in order to curb bad faith or fraudulent filings.

Trade marks
The assignment of a registered trade mark must be registered with the IPRD. According to the Trademarks Act, until an application has been made for the registration of the transaction, the transaction shall not have effect vis-à-vis third parties. The IPRD is furthermore requiring the submission of the POA to the trade mark attorney filing the assignment together with notarised proof of the documentation regarding the transfer.

Registered Designs
The assignment of a registered design right is a transaction which must be registered with the IPRD in order to have effect vis-à-vis third parties. According to the Patents & Designs Act, in the case of an assignment of a registered design right, the details needed for the registration of said assignment are:

  • (i) the name and address of the assignee, and
  • (ii) the date of the assignment.

The IPRD is furthermore requiring the submission of the POA to the attorney filing the assignment together with notarised proof of the documentation regarding the transfer.

Patents
The assignment of a registered patent must be registered with the IPRD. The assignment of a patent application or patent shall have effect vis-à-vis third parties only after entry thereof is made in the patent register.

The IPRD is furthermore requiring the submission of the POA to the attorney filing the assignment together with notarised proof of the documentation regarding the transfer.

Brazil Small Flag Brazil

The register is necessary once the property of the IP right is not transmitted until it is recorded at the competent authority.

Copyright assignment is not required to be recorded, but it can be done at the competent authority if the copyright itself is registered, or, if it is not registered, its assignment can be notarized.

Norway Small Flag Norway

There is no requirement to register an assignment, although specific registers does exists for those rights that are registrable, and registration may be advisable in terms of obtaining legal protection.

Updated: September 19, 2018