Assigning intellectual property rights (IPRs)

Once a business or individual has successfully secured intellectual property rights, they are in a position to transfer or sell those rights. In order to effectively transfer the ownership of the various types of IPRs, a contractual assignment must first be put in place.

An intellectual property assignment is the transfer of an owner’s rights, title and interest in a specific type of intellectual property. In some ways similar to tangible property, under an assignment agreement, the transferring party (‘assignor’) will transfer their ownership rights to a third party (‘assignee’). Generally, the three main types of IPRs transferred in these type of agreements are trade marks, copyrights and patents.

Regarding trade marks, a trade mark assignment is a transfer of ownership of a trade mark from one party to another. A trade mark assignment must be in writing and signed and dated by or on behalf of the assignor. In order to complete the transfer successfully, the United Kingdom Intellectual Property Office (UKIPO) must be notified by way of a TM16 form accompanied by the assignment and payment of relevant fees (£50 for form TM16 only). Once the UKIPO receives the required documentation, a new trade mark certificate will not be issued to the new proprietor of the mark  however, the change of ownership details will be updated on the official register.

With regards to copyrights, as this type of IP is regarded as an ‘unregistered right’, it is of upmost importance to ensure the record of a transfer is documented in writing. Unlike a trade mark assignment which details the trade marks being transferred, a copyright assignment will detail a list of works (or future works) that are being transferred, for example,  the designs of a product. A copyright can be assigned in whole or partially. For example, the owner of the copyright could assign the right to copy the written works to one writer, and assign the right to make translations of the work to another writer.

As for patents and similarly to trade marks, a patent assignment requires for the assignor to transfer the ownership of the patent to the assignee by way of a signed written assignment. With patent assignments, the UKIPO needs to be formally notified of the transfer within six months as failing to do so could potentially limit the proprietor’s chances of being awarded costs in a subsequent infringement action. Recording an assignment will also put other third parties on notice that one has an interest in a patent. Drafting a patent assignment is of fundamental importance to ensure the proper transfer of ownership.

Whether trade marks, copyrights or patents, an assignment should be drafted bespoke to suit you or your businesses needs and desired outcomes. Lawdit can assist you in ensuring the transfer of your IP is a smooth process.

If you would like any further information on assigning your intellectual property, contact us today.

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