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Keeping ownership up to date

By John Rule

Mergers, acquisitions, divestments and other corporate transactions can lead to changes in ownership of IP. Where only small numbers of patents, patent applications, and other IP rights are transferred, recording the change in ownership can be relatively easy to handle. Even in these circumstances the process can be costly and time consuming if good practice is not followed.

In many jurisdictions it is a requirement that official registers of patents, trade marks and registered designs are kept up to date. Failure to do so can lead to negative consequences. For example, in the UK, if a new proprietor of a UK patent or new exclusive licensee of a patent fails to register their right in the patent within a certain time frame, in infringement proceedings they may suffer from not being able to have costs or expenses awarded in their favour.     

At Coulson & Rule we have significant experience in managing the transfer of small and significantly sized IP portfolios and recording changes in name, address and owner of IP rights worldwide. In this article we explain how following a few key points can significantly reduce the work, cost and time involved in transferring IP and making changes to ownership details of IP portfolios.

To ensure that your company knows exactly what IP assets it holds good records management is essential. In many circumstances however, a company will rely on outside help for the procurement and maintenance of its IPRs, both domestically and abroad. A prime example is the out-sourcing of renewal or maintenance fee payment of registered rights. It is important to keep track of which domestic and overseas patents have been maintained or allowed to lapse. It is also necessary to bear in mind that European Patents become a series of national patents after grant. Keeping track of which EP states a European patent has been validated in and in which countries a patent has subsequently been maintained is essential.

Before a company can trade its IPR assets it needs to be able to state what those assets are. This means not only being able to list registered IP rights, but also being able to identify and document unregistered IP rights. When selling or acquiring the IP assets of a business consideration should be given to the following:

  • Unpublished patent, trade mark and registered design applications.
  • Published pending and granted patent, trade mark and registered design applications.
  • Trade secrets.
  • Confidential information and know-how.
  • Internally documented inventions for which patent protection has not yet been applied.
  • Unharvested IP.
  • Confidentiality agreements and NDAs that are in place with third parties.
  • License agreements that are in place with third parties.

Once a complete schedule of IPR that the transaction covers has been established, checked and verified, and agreed by both parties, a formal transaction document can be created. Key considerations here include the jurisdictions in which the transaction document will need to be recorded and the legal and language requirements of those countries. For example, many jurisdictions will require the transaction to be provided in an official language of their country. Translation of a lengthy transaction agreement can take time and incur cost, whereas utilising a brief form assignment document may suffice for the purposes of recordal and will minimise cost and reduce time.

Additionally, consideration should be given to whether an original document is needed, whether it should be signed by both parties and whether the document needs to be legalised, notarised and/or apostilled; in this way the right kind of documents for the purposes of recordal can be created at the outset. If original documents are required in different jurisdictions then having more than one transaction document signed can significantly improve the timeliness with which a transaction can be recorded in multiple territories.

Once a deal is done it can be difficult subsequently to revert to the other side to obtain signatures, documents and their agreement that an IP right missing from the original schedule should actually have been transferred as part of the trade. Good ground work is necessary from the start to ensure that all IPR assets that should be are included in the transaction and to facilitate an efficient and lowest possible cost recordal of the transaction.

At Coulson & Rule we have significant experience in managing the transfer of significant IP portfolios and recording changes in name, address and owner of IP rights. Contact us on 01788 547 389 or for advice on efficiently and compliantly transferring IPR. 


This news item may contain information of general interest about current legal issues, but does not contain legal advice.