What are the requirements to assign ownership of each of the intellectual property rights described in section A?

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

Deed of assignment.

Norway Small Flag Norway

There are no specific requirements on assigning an intellectual prop¬erty right pursuant to Norwegian law.

Singapore Small Flag Singapore

All registered rights will only be effectively assigned if the assignment is in writing and signed by or on behalf of the assignor. For registered GIs, the assignee must be a person who is also entitled to file for registration of the GI (see Question 3), and must consent to having the registration transferred to him.

An assignment which is not in writing will constitute an equitable assignment only, until the equitable assignee calls for and obtains a written assignment. An equitable assignee is not entitled to certain rights, for example to bring an action for trade mark or copyright infringement in its own name.

For unregistered rights, there are generally no special requirements except for copyright and layout designs of integrated circuits, for which an assignment must be in writing and signed by or on behalf of the assignor.

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Patents

Written assignment agreement (signed by both parties) stating:

1)     Names, addresses and nationalities of both parties, and

2)     Details of the invention.

Agreement must be recorded with the Mexican Patent and Trademark Office.

Utility models

Industrial designs

Integrated circuits

Trade Secret

Written assignment agreement, signed by both parties, stating the relevant trade secret and all the mechanism and measures to keep the confidentiality of the information.

Brands

IP right

Requirement

Trademarks

Written assignment agreement (signed by both parties) stating forth:

1)        Names, addresses and nationalities of both parties, and

2)        Details of the trademark.

Agreement must be recorded with the Mexican Patent and Trademark Office.

Trade names

Slogans

Trade Secrets

Certification marks

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)      Details of the work;

3)      Agreed remuneration; and

4)      Term, unless it’s a work made for hire.

Related rights

N/A

Reservation of rights

Written assignment agreement (signed by both parties) stating:

1)        Names, addresses and nationalities of both parties, and

2)        Details of the reservation of rights.

 

Record the agreement with the Mexican Copyright Office.

Plant varieties

Written assignment agreement (signed by both parties) stating:

1)        Names, addresses and nationalities of both parties, and

2)        Details of the right.

 

The agreement must be executed before a Notary Public and further legalized by Apostille or Consular legalization.

 

Record the agreement before the Mexican Seed Inspection and Certification Service.

China Small Flag China

Patents, semiconductor topography, plant varieties, copyright and Trademarks: file a request for the assignment.

Ecuador Small Flag Ecuador

The assignment of the ownership of each intellectual property right described in section A is done by a favourable resolution of the competent entity -SENADI- in favour of the registration applicant. That resolution is sufficient proof the ownership of the right.

South Africa Small Flag South Africa

In each case a simply signed assignment document is required.

Cyprus Small Flag Cyprus

An assignment may be recorded via the filing of a request for recordal of a change of ownership of an application or of a patent (using Form Π. 3). This must be accompanied by the assignment agreement (duly certified and accompanied by a Greek translation if it is in a foreign language) which must contain at least the serial number and date of the patent application or of the patent, the title of the invention and the names, addresses, nationalities, and signatures of the assignor and assignee. Further, a power of attorney issued by the assignee must accompany the form. Fees due to the Registrar apply.

In order to record a trade mark assignment, a specific form must be filed (Ε.Σ. 16) the assignment agreement (duly certified) and accompanied by a Greek translation if it is in a foreign language, must be filed with the Registrar and be accompanied by a power of attorney issued to the lawyer filing the assignment recordal. The filing may be effected any time following the execution of the assignment agreement, however, the applicable fees increase the later one files following the signing of the assignment agreement.

As regards certification marks, these may be assigned only with the special consent of the Registrar.

Copyright may be assigned via an assignment agreement in writing entered into between the assignor and the assignee. Importantly, it is possible to enter into an agreement for the assignment of future works.

Registered designs may be assigned with the filing of an assignment agreement (notarized original or certified copy thereof).

It is not possible to assign domain names.

Japan Small Flag Japan

To assign a patent, a utility model, a design or a trademark, registration of the assignment is required.

There are no requirements to assign a copyright.

Switzerland Small Flag Switzerland

The assignment in whole or in part of patents, trademarks and designs requires a respective commitment and a separate material transfer of the rights and is only valid if evidenced in writing. The assignment of a guarantee or collective mark must in addition be registered in the trademark register in order to be valid.

There is no formal requirement for the assignment of copyright ownership, which may even be concluded orally. However, for evidence purposes and to avoid possible interpretation disputes, it is advisable to enter into a written agreement. Moral rights under the CopA are in general not assignable. However, the author can waive his respective rights or allow a third party to exercise certain of his moral rights.

Economically, IP rights may also be "transferred" in the course of corporate transactions in the form of a share deal: Whereas, legally, title to the IP rights remains with the same company, the shares in such company are transferred to an acquirer. Share purchase agreements are generally concluded in writing for evidence purposes (written form is required with regard to limited liability companies). The form of the transfer as such depends on the legal form of the entity in question, whether or not share certificates have been issued and, with regard to corporations, whether the entity has issued registered shares or bearer shares.

IP rights may also be transferred in the course of other corporate transactions, including mergers, de-mergers or asset transfers pursuant to the Swiss Merger Act. Such transactions generally require a written agreement and some form of corporate resolution depending on the entities involved as well as registration in the commercial register.

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

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 that 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.

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.

Israel Small Flag Israel

Assignment of registered rights must be in writing. An appropriate application to record the assignment must be filed with the Patent, Trademark and Design Office. It is highly advisable that the deed of assignment identify the Israeli IPR expressly by its number.

Designs: Design rights may be assigned, in whole or in part, by agreement or by law, and the design owner may grant them an exclusive or non-exclusive license. An agreement for the assignment of rights in the design or granting of an exclusive license must be in writing.

Trademarks: Deed of assignment must include a statement that to the best of the assignee or assignor’s knowledge, the deed will not cause confusion among the public. If such statement not indicated, a separate affidavit may be provided. A power of attorney signed on behalf the assignee is also required.

Copyrights: Assignment of copyright ownership or for granting an exclusive license for it must be in writing.

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.

France Small Flag France

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.

Supplementary protection certificates

The assignment of supplementary protection certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

Utility certificates

The assignment of utility certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

Plant varieties

The assignment of plant varieties certificates must meet the same conditions as for patents (Article L.623-24 of the IPC).

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.

Collective and certification marks

The assignment of collective marks meets the same conditions same as for trademarks (Article L.715-2 of the IPC).

However, assignment of certification marks is not possible. Only the transmission of the certification mark to a second legal person is allowed if the initial legal person has been dissolved (Article L.715-2 §4 of the IPC).

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.

Semiconductors

The assignment of semiconductors rights must meet the same conditions as for patents (Article L.622-7 of the IPC).

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).

Italy Small Flag Italy

Although Italian law does not require any specific procedure or formal requirement, the IP assignments are made in writing, for the purpose of evidence and to be recorded with the IPTO.

Copyrights can be transferred through assignment or licence agreement; the transfer of the rights must be evidenced in writing (Article 110 ICL).

Peru Small Flag Peru

(a) Inventions:

Patents, industrial designs, utility models:

A patent, industrial design or utility model granted or in the process of being granted may be assigned or transferred by succession.

Any assignment of a patent, industrial design or utility model must be registered with the competent national office. The lack of registration will cause the transfer to be ineffective against third parties.

For the purpose of registration, the transfer must be in writing.

Any interested person may request the registration of a transfer.

(b) Trademarks:

A trademark registration granted or in the process of registration may be assigned or transferred by succession, with or without the company to which it belongs.

Any assignment of the trademark registration must be registered with the competent national office. The failure to register will result in the transfer not being effective against third parties.

For the purpose of registration, the transfer must be in writing.

Any interested person may request the registration of a transfer. However, the competent national office may refuse such registration, if the transfer involves a risk of confusion.

(c) Copyright

The economic right can be transferred by mandate or legal presumption, by cession between alive or transmission mortis causa, by any of the means allowed by law.

Any assignment between living parties is presumed to be made for consideration, unless there is an express agreement to the contrary, and reverts to the transferor when the right of the transferee is extinguished.

The assignment is limited to the right or rights assigned, and the time and territorial scope agreed upon contractually. Each one of the modalities of use of the works is independent of the others and, consequently, the assignment on each form of use must be stated in an express and written form, being reserved to the author all rights that have not been explicitly assigned.

If the territorial scope had not been expressed, it will be considered as the country of its granting; and if the mode of exploitation is not specifically specified, the transferee may only exploit the work in the manner that is necessarily deduced from the contract itself and is indispensable to fulfil the purpose of the contract.

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.

Trademark: 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 unregistered trademark 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.

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. 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.

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.

Trademarks

The assignment of a registered trademark 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.

Unfair Competition

Rights granted under unfair competition are customarily transferred through a transfer of goodwill agreement. There are no specific statutory transfer requirements.

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 trademark must be made in writing and be signed by the parties.

Trade Secrets

There are no specific statutory requirements for the assignment of trade secrets. As long as there is a lawful acquisition of such an IPR then the assignment would be valid however, due to the complexity of trade secret and their dependence on documented procedures and knowledgeable employees, a trade secret transfer would have to be examined on a case by case basis due to the complexity when it comes to any potential enforcement of the acquisition.

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.

Saudi Arabia Small Flag Saudi Arabia

At the outset, it should be a registered right. There shall be written agreement with clear terms of assignment. Application of assignment alongwith copy of assignment shall be filed with IP office and official fee shall be paid at the time of filing.

Australia Small Flag Australia

The assignment of intellectual property rights (either in whole or in part) may be affected by an agreement, which is usually in the form of a Deed of Assignment. The assignment must be in writing and signed by or on behalf of the assignor.

United States Small Flag United States

Assigning ownership of Intellectual Property rights operates generally as a contract. To assign a patent, trademark, or copyright, the assignment should: 1) be in writing; 2) clearly identify the parties; 3) identify the patent, trademark, or copyright; and 4) recite exchange of consideration, though the consideration can be nominal.  In addition, if the assignment is with an individual rather than a corporation, it is recommended that the agreement be notarized.  With respect to trademarks, the assignment must also include the goodwill associated with the mark.

A party may assign its entire interest or a share to another party.  A party may also assign its rights in a patent for a geographic region.

Updated: September 12, 2019