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 (3rd edition)

Malaysia Small Flag Malaysia

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

Norway Small Flag Norway

There is no requirement to register an assignment of an intellectual prop¬erty right pursuant to Norwegian law, but it is recommended. Ensuring the correct owner is registered provides notoriety for third parties and enables NIPO to send the notification of annual fee to the right person. Also, the first registration of assignment gives legal protection in cases of assignment of the same right to multiple parties or bankruptcy proceedings.

Singapore Small Flag Singapore

Recordal of an assignment is not mandatory, but is recommended. For registered rights, until an application is made to record an assignment, it is ineffective against a person acquiring a conflicting interest in that right in ignorance of the transaction. This is not expressly provided for in the legislation for GIs and plant varieties, but will nevertheless still be generally applicable on the basis of equity. For some rights, the assignee will also not be entitled to certain rights or remedies which accrue after the date of the assignment.

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;

3)      Recordal request containing:

               I)        Names, addresses and nationalities of both parties;

              II)        Details of the invention;

             III)        New address of record for correspondence;

            IV)        If applicable, name of the new domestic representative; and

             V)        Payment of official fees.

The assignment agreement will not have legal effects against third parties unless it is recorded.

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.

3)      Recordal request containing:

               I)        Names, addresses and nationalities of both parties;

              II)        Details of the right;

             III)        New address for service;

            IV)        If applicable, name of the new domestic representative; and

             V)        Payment of official fees.

The assignment agreement will not have legal effects against third parties, unless it is recorded.

Trade names

Slogans

Trade dress

Certification marks

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)   Identifications of the parties or of their representatives (for companies);

3)   Spanish translation;

4)   Recordal application form; and

5)   Payment of official fees.

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)   Identifications of the parties or of their representatives (for companies);

3)   Spanish translation;

4)   Recordal application form; and

5)   Payment of official fees.

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

Plant varieties

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

2)   Complete name, nationalities and addresses of the parties;

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

4)   Spanish translation;

5)   Recordal application; and

6)   Payment of official fees.

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

China Small Flag China

Yes. Failing to register results in invalid assignment.

Ecuador Small Flag Ecuador

Yes, it is necessary to submit a contract of assignment agreement. If the assignment is not registered, the owner can request his registration again.

South Africa Small Flag South Africa

The fact of the assignment should be recorded at the Patent Office for it to be effective as against 3rd parties. Even if not registered the assignment will still be effective as between the parties thereto.

Cyprus Small Flag Cyprus

It is imperative that the assignment of a patent, trade mark, certification mark, design right be recorded as outlined above in order for these to be actionable.

Japan Small Flag Japan

The assignment of a patent, utility model, design or trademark is not effective unless the assignment is registered.

The assignment of a copyright is not effective against a third party unless the assignment is registered.

Switzerland Small Flag Switzerland

Only for guarantee or collective marks: The assignment of a guarantee or collective marks will not be valid if it is not registered in the trademark register. 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 from the assignor (i.e. without knowledge of the assignment to the assignee).

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.

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.

Israel Small Flag Israel

Patents: Yes. Only the registered holder may file a lawsuit for patent infringement. There is no case law on the right of a registered holder to claim damages for infringements that occurred after the date of the contractual assignment and before the belated recordal of the assignment and registered patents.

Trademarks: Yes. Failure to register an assignment may result in the trademark becoming vulnerable to cancellation due to non-use by its registered owner.

Designs: Yes. Failure to register an assignment may result in the assignment of rights being valid only between the parties.

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.

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.

For:

• patents: see Article L.613-9 of the IPC;
• supplementary protection certificates: see Article L.611-2 of the IPC;
• utility certificates: see Article L.611-2 of the IPC;
• plant varieties: see Article L.623-14 of the IPC;
• designs: see Article L.513-3 of the IPC;
• trademarks: see Article L.714-7 of the IPC;
• collective marks: see Article L.714-7 of the IPC;
• semiconductors: see Article L.622-7 of the IPC;
• copyrights: no registration of the assignment is required.

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.

Peru Small Flag Peru

(a) Inventions: Patents, industrial designs, utility models:

Assignment of registered elements:

It is required to file copy of the contract or written agreement with certain date and signatures duly legalized, in which the translating act of domain is recorded, which must specify the following:

  • Names or business name of the contractors
  • Register of the items matter of transfer.
  • Delimitation of the territory
  • Mention of the exclusive nature of the license to be the case
  • Term of validity of the license
  • Number and validity of the certificate or certificates in which it is registered.

In the case of a change of ownership and this result of a contract, it will be sufficient to accompany:

  • Copy of the contract certified by a notary public or any other competent public authority, certifying that said document is in conformity with the original contract.
  • An extract of the contract that shows the change of ownership, which must be certified by a public notary or any other competent public authority.

(b) Trademarks:

The trademarks have the following requirements:

  • Must be in written form mentioning the trademark, class, goods and/or services, certificate number and/or file number.
  • Data of the company that will sell (assignor), as well as, name of the company, address, country and legal representative.
  • Data of the company who will purchase the trademark (assignee) as well as, name of the company, address, country and legal representative.
  • If the document is made abroad it must be notarized and legalized before the Peruvian Consulate or apostilled.

Furthermore, kindly be informed that in case the owner of the trademark is a person (not a company) and is married we have two possibilities:

1. The husband/wife must sign the assignment.

2. File an affidavit where the owner of the trademark declares that the trademark has been registered before his marriage.

(c) Copyrights

1. Fill out a format, recording the following information:

  • Data of the applicant, number of Single Taxpayers' Register, if applicable, and address (Note 18) in which the notifications will be made.
  • Type of act or contract to be registered.
  • Object and duration of the act or contract.
  • In the case of contract, indicate the data of the parties involved.

2. Copy of the documents accrediting the Assignment of Rights or the Contract of transfer of copyright or related rights.

3. In the documents of Assignment of Rights or Assignment´s Contract, to specify clearly the transferred rights, the territory, if the act is onerous or free.

4. If applicable:

  • Copy of the documents that prove the existence of the applicant legal entity.
  • The powers that were to be necessary.
  • In the case of documents prepared in a foreign language, they must be translated into Spanish.

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 trademark, 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.

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 trademark 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.

Trademarks

The assignment of a registered trademark 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 trademark 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.

Failing to properly register an assignment will only affect its validity vis-à-vis 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.

Saudi Arabia Small Flag Saudi Arabia

It is mandatory to record assignment with respective IP office otherwise such assignment will not be effective vis-à-vis third parties.

Australia Small Flag Australia

There is a requirement to record an assignment (or partial assignment) of registered rights, including trade marks, patents, registered designs and plant breeder’s rights, with the relevant Registrar.

The request must be made in writing using the specific form available for each registered intellectual property right and must include details of the intellectual property the subject of the assignment, as well as documentary evidence of the assignment.

The relevant register is prima facie evidence of any particulars entered in it. As such, it is important that the public record correctly reflects the owner of the registered intellectual property right. Failure to record an assignment of a registered intellectual property right can have serious consequences. For example, certain actions are required to be brought by the registered owner.

United States Small Flag United States

Patent and trademark assignments may be recorded with the USPTO. For both, the USPTO has an online form that an owner can use to record the assignment. The failure to record an assignment of a patent or trademark does not render the assignment invalid.  But if an owner fails to record the assignment, then the assignment will be void against a subsequent purchaser that lacked notice of the earlier assignment.

For Copyright assignments, recording with the Copyright office is optional. If recorded with the Office, the recordation creates constructive notice of the facts surrounding the assignment or transfer of ownership if a subsequent dispute arises.

Updated: September 12, 2019