IP Recordals: How to Record Patent Assignments Effectively

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While it can be tempting to think of an IP portfolio as an asset that takes care of itself, the reality is not so simple. To ensure that rights remain valid and enforceable, IP recordals must be filed at relevant patent and trademark offices, with some offices recording those updates in a publicly accessible patent assignment database.

From a simple change to a company name or address to a major merger or acquisition, many corporate changes require IP records to be updated to keep them valid and in force. However, updating these records is rarely as straightforward as it sounds, especially for holders of global portfolios, with the fees, procedures, deadlines, and required documents for IP recordals varying from country to country.

Previously, we covered the IP recordals process focusing on updating trademark records; here, we will look in more detail at the requirements for updating the records held in patent office databases.

Is There a Global Patent Assignment Database?

Part of the reason that managing the patent recordals process is so complex and time-consuming is that there is no single IP recordals process or global patent assignment database. Instead, successful completion of patent assignment and recordals projects requires a comprehensive knowledge of all relevant local regulations, timetables, and fees—including any publicly accessible patent assignment database that is available.

Processes and formalities vary widely between jurisdictions, from comparatively simple online systems to the need to notarize and legalize documents, including issuing powers of attorney, before submission. For example, many national patent offices request the submission of the original patent documents (with or without notarization), scanned and notarized copies, or notarized and apostilled copies as part of the process and stipulate the required language for the assignment. Others, such as the European Patent Office (EPO) and US Patent and Trademark Office (USPTO) require only scanned copies (the USPTO also publishes US patent assignment (ownership) changes in a searchable patent assignment database).

As many national patent and trademark offices also stipulate the involvement of local IP agents, attorney firms must be identified, hired, and overseen in each jurisdiction. If the IP portfolio covers multiple countries, this alone can make managing the process in-house burdensome and costly. For example, recording a change in ownership for a Patent Cooperation Treaty (PCT) patent could require coordination with more than 100 patent agents.

Looking For a Simplified Solution?

Many IP owners choose to outsource their IP recordals projects to specialists, such as Questel. We have the necessary experience, connections, and tools to streamline the process and significantly reduce your administrative burden, including a global network of reliable patent and trademark agents who support our clients in recording changes in patent and trademark databases anywhere in the world.

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How to Plan and Execute Patent Recordals

Ensure your patent recordals projects go as smoothly as possible with the help of our checklist below.

Plan your recordal projects effectively:

Prepare your data: Patent assignment forms should include a schedule listing all related patents being assigned. Be sure to include the entire portfolio being transferred, including any national phase patents based on a PCT application and the EP validation states for European patent (EP) rights.
Consolidate your patent assignment projects: To facilitate database updates, many regional patent offices provide reduced rates for bulk requests for change in a single jurisdiction, as long as the assigning parties are identical.
Prioritize formalities: As mentioned earlier, some jurisdictions require various degrees of legalization of patent assignment forms. These should be identified and their forms prioritized to avoid project delays.
Adapt to the local jurisdictions: In many cases, assignment translation and certification requirements can be avoided by having your agent prepare a fresh assignment best suited for the jurisdiction requirements.

Consider timing and reach to maximize individual assignments:

PCT: When transferring ownership during the international PCT stage, it’s always best to record the change for the PCT application prior to national phase entry. The updated applicant will automatically be recognized and recorded in the patent database of subsequent national patent offices.
EP: The EPO assignment recordal may also be used in some validation states. Therefore, if a change in ownership occurs during the prosecution of an EP application, it is best to record it with the EPO prior to the grant of that patent. Note: In some EP states, the change will take effect automatically based on EPO Form 2544.
US: In some cases, an assignment recorded with the USPTO can be used to record the assignment in other jurisdictions (one example is Canada).

Check and doublecheck patent assignment documents before submission:

Accuracy is key: Each assignment document must match the applicant/patentee details exactly as listed in the patent registration, including their address.
Tick all the boxes: Some jurisdictions require the assignment form to mention a monetary sum for consideration as a formality (the sum could be as low as US$1). For example, the form may contain text such as: “In consideration of the sum of US$1 (receipt of which is hereby acknowledged), the Assignor hereby transfers to the Assignee all rights in the Patent.” Adding this section to the assignment may save you time executing updated forms later.
Make sure the chain of title is clear: In some cases, multiple changes may need to be recorded to reflect several changes in ownership. If that happens, it’s important to ensure that the entire chain of ownership is recorded.

Minimize demands with ‘smart’ signing practices:

Collect documents for bulk signing: It’s best to have all forms ready and then executed (signed) by all the required signatories at the same time in a single meeting.
Ensure you have the right number of documents: Some jurisdictions require an original assignment agreement, so print and have several copies of this document signed to ensure you have multiple original hard copies on hand. Organizing the signature of additional forms signed later (especially after M&A) can be difficult or impossible since the original assignee may no longer be available or entitled to sign.

How to Make a Complicated Process as Simple as Possible

Maintaining or updating patent data, while inherently complex, doesn’t have to be a burden to you and your team. With some thoughtful planning and the right support, the patent recordals process can be successfully executed in an efficient, cost-effective, and timely manner.

Contact our subject matter experts to find out more about the patent assignment process, including how Questel can support you to update your patent rights in each jurisdiction and database.