What are the requirements to assign ownership of each of the intellectual property rights described above?

Intellectual Property (2nd edition)

Japan Small Flag Japan

A registration for an assignment of a patent, utility model right, trademark right or design right is required in order for such assignment to take effect. For assignments of other types of intellectual property rights, no registration is required.

UAE Small Flag UAE

N/A

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

 

Geographical Indications

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.

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.

This deed, is an agreement between the concerned parties, which is reduced in a form of document, embodying all the terms and condition governing their right and obligation in respect of the patent.

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.

Updated: June 15, 2018