Formalities for assigning the main IPRs (patents, trade marks and copyright)

It is imperative to appreciate that an assignment is a form of contract and according to English law, must be executed as a deed if there is no consideration for the transfer of the intellectual property right.

Regarding patents, an assignment should be in writing and signed by or on behalf of the assignor. The UK Intellectual Property Office (UKIPO) needs to be formally notified within six months of the transfer a lack of adherence could limit the proprietor’s chances of being awarded costs in a subsequent infringement action. Recording an assignment will also put third parties on notice that one has an interest in a patent.

As for trade marks, an assignment must be recorded if it is to be effective against a third party who obtains a conflicting interest in the mark. In respect of UK trade marks, an assignment needs to be in writing and signed by or on behalf of the assignor. If one fails to comply with this condition within a six month time period and does not have a valid reason for doing so, the proprietor is unlikely to receive an award of costs in a future action for infringement. An assignment pertaining to Community trade marks (CTMs) should be expressly written down and signed by both the assignor and the assignee. However, unlike an assignment of a UK trade mark one does not have to contend with a legal timescale for recording the transfer.

In relation to copyright, there is a requirement that assignments be documented and signed by or on behalf of the assignor. From a practical standpoint, it is important to record the transfer of an unregistered right. Articulating an assignment in an intelligible format will mean that a third party can look at the document and know exactly what was being transferred.

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