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

Intellectual Property (2nd edition)

Russia Small Flag Russia

A patent or trademark assignment agreement must be in written form and signed by both parties, otherwise the agreement is invalid.

An assignment transfers full ownership and thus must not include any restrictions or limitations on further use of the assigned patent or trademark.

Every assignment agreement between commercial entities must state what consideration is given.

A trademark assignment may not mislead the public or result in confusion as to the origin of goods or services or its manufacturer. This is the case if:

  • the assignor wants to keep in its name the trademark registration of certain goods or services that are similar to the assigned ones;
  • the assigned trademark is well known;
  • the assignor remains the owner of other confusingly similar industrial designs, company names or trademarks protected for similar goods.

An industrial design assignment is also prohibited if it such assignment may lead to confusion by the public as to the goods or their manufacturer.

The right to an appellation of origin of goods or to a company name cannot be assigned.

China Small Flag China

Trademarks: Assignments must be filed at the CTMO and take effect from the date they are published in the Trademark Gazette.

Copyright: It is optional to register a copyright assignment with the CPCC. If elected, the copyright assignment agreement along with other formalities are required. A transfer of copyright shall require the conclusion of a written contract and should include the following main details:

  1. The title of the work;
  2. The types of right(s) being transferred and the geographic coverage of the transfer;
  3. The transfer price;
  4. The date and method of payment of the transfer price;
  5. Liability for breach of contract; and
  6. Other details which the parties consider necessary.

Patents: Assignments must be in writing, stating the names of the parties, defining the rights, signed/ chopped by the parties, and then filed at SIPO. For assignments involving invention or utility model patents/ applications, the assignment is also subject to technology exports regulation when the assignor is a domestic entity/ individual, while the assignee is a foreign entity/ individual.

France Small Flag France

i. Patent
A patent can only be assigned in writing. It can be assigned either in whole or in part (IPC Article L613-8).The parties can also decide to set a reduced/limited term to the assignment.

ii. Trademark
As for patents, a trademark can only be assigned in writing. It may either concern the entire trademark or be limited to specific goods or services. Such limitation cannot, however, concern a part of the French territory or a part of the sign itself (Article L.714-1 of the IPC). The parties can also decide to set a limited term to the assignment.

iii. Designs
A writing is not mandatory to assign a design though it is required to be enforceable against third parties (Article R.512-15 of the IPC). As for patents and trademarks, a design can be assign either in whole or in part, for a limited term. Such limitation cannot concern a part of the French territory.

iv. Copyright
A copyright work can be assigned either in whole or in part. However, only patrimonial rights attached to copyright work may be assigned at the exclusion of moral rights which are non-transferable (Article L121-1 of the IPC).

Since the law of 7, July 2016 “on freedom of creation, architecture and heritage" a written assignment is required (Article L131-2 of the IPC) . In the past, a written assignment was only required for publishing agreements, performance agreements and audio.

Pursuant to case-law, these provisions should apply only to the original author and natural person.

Making a written agreement is however highly recommended as it is has always been required to define precisely the assigned rights in terms of scope and purpose, territory and duration ( Article L.131-3 of the IPC).

Switzerland Small Flag Switzerland

Patents, trademarks and designs can only be assigned in writing. The assignment of a guarantee or collective mark must be registered in order to be valid.

There is no formal requirement for the assignment of copyright ownership, which may even be concluded orally. There are however exceptions, for example where the assignment arises in the framework of the splitting of a company or a transfer of assets within the meaning of the Swiss Merger Act. In such cases, the agreement must be made in writing and approved by the shareholders meeting. Moreover, in case of joint ownership, the joint owner must obtain the agreement of the other owner(s). Moral rights are in general not assignable. However, the author can waive or allow a third party to exercise certain moral rights, which has the consequences of limiting the scope of these works. In any case, for evidence purposes and to avoid possible interpretation disputes, it is advisable to enter into a written agreement.

As they are tied to a specific product and not to a specific owner, PGI/POA cannot be assigned as such.

Poland Small Flag Poland

Assignment of ownership of intellectual property rights requires concluding an agreement in writing under the pain of nullity. For certain rights, there are additional factors to consider while concluding a contract of assignment. For instance, copyright assignment requires specifying so-called fields of use (ways of using the work) covered by such assignment in order to be valid.

Italy Small Flag Italy

Italian law does not require any specific procedure or formal requirement to assign an IP rights, but normally it is made in writing, including for the purpose of evidence.

Cyprus Small Flag Cyprus

Patents and SPCs:

  1. Request for recordal on prescribed form
  2. Deed of assignment in Greek or with Greek translation, legalized by Notary Public, signed by the assignor and the assignee, mentioning at least the number and date of patent or application, the title and the invention, the names, addresses and nationalities of the assignor and the assignee
  3. Power of attorney from the assignee
  4. Payment of the required fee

Trade marks:

  1. Request for recordal on prescribed form
  2. Original or certified copy of the deed of assignment, legalized by Notary Public, signed by the assignor and the assignee
  3. Payment of the required fee

Certification marks can only be assigned with the special consent of the Registrar.

For the assignment of a copyright, a written assignment deed between the assignor and the assignee is needed. It is possible to assign a future work.

To assign the right of registration of a design and the rights deriving from a registered design, an assignment must be registered with the Registrar who will request a written assignment deed. A notarized original or certified copy of a Deed of Assignment or any other written document evidencing the assignment must be provided.

Domain names cannot be assigned or transferred; only a transfer of a domain name to another domain name server (DNS) or to other internet service provider is available.

Israel Small Flag Israel

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

In order to record an assignment of rights later on, a suitable request in writing needs to be submitted with the ILPTO by the assignee, with a supportive Deed of Assignment.

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 by the assignee. This request must include an original Deed of Assignment that includes a statement that to the best of the assignee or 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.

Chile Small Flag Chile

The transfer of all the intellectual property rights indicated above is carried out through a private contract in which the parties must be identified, and the intellectual asset to be transferred and the price of said transfer must be present.

Greece Small Flag Greece

The assignment of registered intellectual property rights must be made by a written agreement. The same applies for the assignment of know-how and copyright. However, in the case of copyright transactions, only the creator can claim the invalidity of a non-written contract. There are no formal requirements for the assignment of trade secrets. According to the leading opinion, company and trade names can only be assigned with the transfer of the business.

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.

Pakistan Small Flag Pakistan

  • Notarized Assignment document.
  • Notarized Power of Attorney.

Ecuador Small Flag Ecuador

The assignment of the registry is done through a favourable resolution of the competent entity - SENADI - and it consequently legal document that approve the granted right.

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.

Malaysia Small Flag Malaysia

Deed of assignment.

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.

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.

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.

Latvia Small Flag Latvia

Patents – The owner of a patent has the right to transfer the patent to another person together with the undertaking or a part thereof utilising such a patent, or independently from it.

Trade marks - The owner of a trade mark is entitled to transfer the trade mark to another person in relation to one, several or all of the goods or services for which the mark is registered, together with the undertaking, or a part thereof, that has been using this mark, or separately from the said undertaking.

Designs - The owner of a design may transfer the ownership rights to the design to another person together with the undertaking or a part thereof that uses such design, or independently from such undertaking. In the case of multiple designs registration the owner may transfer the ownership rights in relation to one, several or all of the designs included in this registration.

Copyright (including database rights) – Only economic rights of an author may be transferred to other successors in title (including legal persons).

Vietnam Small Flag Vietnam

For patents, certificate of layout design, certificate of common trademark:

  • An original copy/certified copy of assignment contract (Vietnamese translation thereof is required)
  • Original copy of patents or certificates subject to proposed assignment
  • A written statement signed by all joint owners if the subject of assignment belongs to joint ownership

In addition to the above requirements, for certification mark and collective mark, additional documents needed: (a) Regulations on use of collective marks, Regulations on use of certification marks drafted and provided by the assignee, and (b) documents providing the good standing (entitlement) to register the collective mark or certification mark in the name of assignee. Please bear in mind that in this case both of these regulations and documents providing the good standing shall be re-examined by the NOIP.

Geographical indications are not assignable in any case while assignment of trade name is permitted only where such transfer attaches to the assignment of the entire business undertaking and business activities under such trade name.

For assignment of copyright and related rights: recordal of assignment is not required. However, subjects of copyright and related rights assignable are one or several or all economic rights plus only one assignable moral right (ie. right to publish or permit others to publish a work).

Germany Small Flag Germany

Patents, utility models, know-how and trade secrets, 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.

Malta Small Flag Malta

Essentially, all assignment of IPR must be executed by an instrument in writing according to Maltese law. The assignment, when the IPR is a registered one, must also be reflected in the respective register and this is usually achieved by filing the appropriate form with the IPRD.

Copyright
Copyright and neighbouring rights are assigned by an agreement in writing between the parties. The assignment may also be limited as to some of the rights enjoyed, or to a period within the term of copyright, or geographically. When an author (in relation to the original or copy of their work) or a performer (in relation to the fixation of their performance) assigns the exclusive right to authorize or prevent the rental thereof to the producer, that author or performer shall retain the right to obtain individually or through a collecting society an equitable remuneration for the rental of the said sound recording or original or copy of the said audiovisual work from the producer concerned and such right may not be waived.

Trade marks
The assignment of a registered trade mark must be made in writing and has to be signed by the assignor or their personal representative. Furthermore, the assignment of a registered certification mark requires the consent of the Comptroller to be effective. The assignment may be partial and limited, such as applying to some of the goods and services, or limiting use to a particular location.

Registered Designs
The assignment of a registered design has to be made in writing and has to be signed by the assignor or his personal representative. As with other IPRs, the assignment may be partial and limited so as to apply in relation to the use of the design in a particular manner or a particular locality.

Patents
The assignment of a registered trade mark must be made in writing and be signed by the parties.

Brazil Small Flag Brazil

Patents, utility models, industrial designs, integrated circuit topographies, know-how and plant variety rights can be freely assigned to any third party. The assignor must be the rightful titleholder of the IP in question at the BPTO/SNPC and the mentioned IP must still be valid by the time the assign takes place. Both contracting parties must have the power to represent each of their companies. It must be pointed out that, according to the general rules of assignment of properties, which are applicable to IP rights, in order to be effective the transmission needs to be registered, which means that the assign must also be written.

Trademarks applications and registrations may be assigned, provided the assignee satisfies the same legal requirements needed for applying to register it. Furthermore, the assignment must comprehend all the registrations or applications, in the name of the assignor, for the same or similar marks, covering identical, similar, or alike products or services; under penalty of having the unassigned registrations cancelled and/or the unassigned applications dismissed. A written assign agreement between the parties is required as for the assign be recorded before the BPTO.

Concerning Geographical Indications, although there is no legal prohibition on this regard, neither the Brazilian IP Law or the BPTO rules currently foresee a specific assign procedure.

The economic rights of a copyright may be freely assigned, provided that it must always be written and is presumed onerous, while the author’s moral rights cannot be transferred.

Norway Small Flag Norway

Copyright protected work, patents, trademarks, company names, designs, plant variety and semiconductor topography rights may be transferred pursuant to Norwegian contract law and freedom of contact. There is no requirement to register such transfers, although specific registers exists for those rights that are registrable.

Updated: September 19, 2018