Justus Kreuels - 29. August 2022

Transfers and assignment of intellectual property rights

In general, it is not possible to acquire patents, trademarks and designs in good faith - unlike in property law. The transfer of rights from the creator of the property right (inventor, designer, etc.) should therefore be fully documentable.

There are no globally binding formal requirements for the transfer of property rights (patents, trademarks or designs). Some countries require the written form. In addition, the question arises as to the law under which the transfer agreements for the transfer of IP rights are concluded. This does not have to be the law of the country in which the IP right applies. Legal provisions of that country may play a role - but so, of course, may the law of the countries in which the previous and the new IP right holder are located. Of course, it is also possible that the IP right holders have contractually agreed on yet another law.

General information about the patent register

The patent register generally has no constitutive effect. Whoever is in the patent register does not have to be the actual patent owner. Nevertheless, the patent register is used as an important source of information when the ownership of a patent is to be established. In practice, this usually means that the party wishing to dispute the ownership entered in the patent register must submit documents proving a different ownership. This also applies in principle to other intellectual property rights, such as designs or trademarks.

Such a transfer of IP rights to change the registered owner of the IP right can be requested before all international patent offices (e.g. the German Patent and Trademark Office - DPMA, the European Intellectual Property Office - EUIPO, the European Patent Office - EPO or the World Intellectual Property Organization - WIPO).

The formal and substantive requirements and documentation obligations in the context of register changes vary worldwide. In most countries, it is sufficient to name the right to be transferred and the parties involved. In some countries, there are regional specifics when applying for a transfer; e.g. certain forms or a submission of a notarial certification.

Why is the transcription of IP rights important?

Registration of a change in ownership is not mandatory. In fact, in many cases there is no transcription in the register - if it is, for example, an actual change of ownership or a change of name.

The transfer of patents, trademarks or designs sometimes requires considerable effort. This may be the case when IP rights from different countries are involved. In many cases, the actual owners of the IP rights do not ensure a transcription for cost reasons, but rely on the fact that the transcription can still be carried out in case of doubt, provided that an IP right is to be enforced. Sometimes it is also intended to prevent the actual owner of the IP right from becoming known from the register.

In fact, however, there are a number of practical disadvantages if the owner of the IP right who is actually entitled to it is not entered in the register. Documents proving a transfer of rights are sometimes much more difficult to obtain if a long time has passed since the transfer. Persons may no longer be available to sign the documents. Possibly the company assigning the IP right no longer exists or has changed its name. If an IP right has been sold several times and the transfers have not been entered in the patent register, the Patent Office should be correctly notified of all transfers (as they occurred) in order to initiate the transfer.

For this reason, we recommend to register as an IP right owner at an early stage if you have acquired a patent, trademark, utility model or design. We will be happy to assist you in doing this as cost-effectively as possible.

Transcription as early as possible

In addition to the fact that the proof of the transfer of rights underlying the transfer usually becomes increasingly difficult over time, there are also other reasons for an early transfer.

If, for example, the priority right of a patent application is to be exercised and there is a change of ownership of the patent application, then the transfer of the priority right to the new owner must be proven separately to the Patent Office. If the transfer took place early, this proof is not required and the overall effort is less.

When an international patent application is rewritten before entering the national phases in each country, it is very efficient to request this from WIPO. For the individual national IP rights that come into existence after entry into the national phase, this is much more complicated and must be done separately in each country.

For a European patent application, the transcription can be commissioned centrally at the EPO. As soon as a European patent has been granted, the national patent offices are involved in the transcription process and the transcription must be carried out in each case with the assistance of national colleagues in the individual countries in which the European patent has been validated. Especially in the case of extensive European patents, this can cause considerable costs.

The additional administrative and financial effort due to a later date of the transfer can also be considerable. In the case of a large European patent, for example, the financial outlay can quickly exceed 10,000 euros, whereas the transfer would have been feasible for less than 500 euros before the patent was granted. This may even justify the delay of the patent grant.

If contracts in foreign languages are the basis for the transcription, notarial certifications and certified translations may be required, which necessitate the involvement of notaries in the respective countries of the contracting parties and the IP right. If this is necessary, the expense of a transcription is again significantly increased. Thereby the legalization is more complex and there are special international agreements which regulate when which type of certification is required.

In many cases, the need for notarization can be avoided if special forms in the respective national language are used to rewrite an IP right. For this reason, strategic planning of the rewrite is recommended when rewriting larger families of IP rights (with IP rights in many countries). First of all, the documents required for the transfer are discussed with the respective local patent attorneys. Then, the documents for the transcription are prepared centrally, choosing the most efficient way in which as few documents and signatures as possible are required.

Drafting contracts for the transfer of property rights correctly

As a general rule, contracts for the transfer of IP rights should be short and comprehensible and suitable for submission to offices and for translation. If necessary, in addition to a more complex contract, declarations can be drafted which clearly indicate the transfer of the IP right and which are suitable for presentation before the offices for the purpose of carrying out the transfer. It is also helpful to have obligations on the part of the former owner of the property right to assist with the transfer and, if necessary, to sign any necessary or helpful declarations at a later date.

Regarding Justus Kreuels:

Justus Kreuels, German and European Patent Attorney since 2011/2012, studied mechanical engineering at the TU Munich and the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the enforcement of intellectual property rights in the field of mobile communication, Internet of Things (IoT), robotics, etc. in Germany.

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