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Have you recently been involved in a transaction resulting in a change in IP ownership? Has this IP transfer been registered with national IP offices to render it legally watertight? Discover the answer to frequently asked questions about IP transfers, from why you should register IP ownership changes quickly to what to do if an ownership change hasn't been managed immediately.
While it is critical to register changes to IP ownership following an IP transfer to give full effect to interests, many companies often choose to defer the necessary IP recordals until a more convenient time. Although such a decision is understandable, the requirement that ownership changes are filed immediately is imposed with good reason, and failing to manage these changes promptly can have disadvantageous effects for IP owners.
If you have not managed a change in IP ownership immediately, however, do not fret. There are still steps that can be taken to record the transaction and minimize risks, as we outline in our answers to some frequently asked questions about IP transfer projects below.
How to Succeed When Transferring IP Assets
The process of transferring IP assets holds many potential challenges. Happily, most of the 'hidden problems' you're likely to face can be navigated by early identification and clarity in planning. Download our guide to the five most common challenges for IP transfers and how to resolve them.
Why is it Important to Register IP Ownership Changes Quickly?
What happens if a change in IP ownership isn't filed immediately? Why is it important to register IP ownership changes quickly? What are the risks of not updating IP records promptly? Before exploring the courses of action for filing changes to IP ownership, it is worthwhile clarifying why quick management is necessary.
Assignees in a transaction have an obvious interest in ensuring that changes to IP ownership are managed immediately, as without such a change, their proprietary interest may not be recognized. Indeed, a third party who is unaware of the transaction can potentially attain a right in the IP asset and take free of the new owner's interest, if this ownership is not registered through the process of IP recordals.
National IP offices also take issue with inconsistent IP records and can choose to file office actions if a failure to manage a change in IP ownership promptly leads to inaccurate records. Moreover, discrepancies in IP records can lead to difficulties with existing license agreements and royalty payments.
Can an IP Transfer Still be Recorded After a Delay?
If none of the above issues have been encountered yet, there is still time to register an IP transfer successfully. Provided that the ownership change is filed as soon as possible, it will be effective.
When doing this, it is always advisable to first seek the assistance of IP recordals specialists, such as Questel. The process of managing a change in IP ownership may appear straightforward, but it has the potential to become complex and time-consuming. Consulting with external service providers who have an extensive knowledge of the processes involved in such a change could save you time and expense in the long run.
How Do You Record an IP Transfer?
When looking to record a change in ownership, you must first identify which IP assets are involved in the transaction. Although this may appear obvious, clearly outlining the IP assets involved is the first step when managing an ownership change.
Secondly, you must identify the territories in which the change is to be registered. Any territories in which the IP is registered will need to have the details updated. However, areas in which the IP is active should be prioritized; for example, any territories in which there are ongoing legal proceedings or other events involving the IP.
When filing a change in ownership, it is prudent to be aware of any relevant deadlines and associated fees. Many territories impose timeframes within which these changes must be filed. While missing these deadlines will not necessarily mean that the change can no longer be filed, you may incur late fees.
In addition to these potential late fees, official fees are usually charged for filing a change in IP ownership. When filing the change with national IP offices, you will invariably be required to pay fees for every change you file.
Such fees will be paid when the documents for filing the change have been completed and submitted to the relevant national IP offices. When managing a change in IP ownership, you must therefore ensure that all relevant documents have been completed and submitted successfully, and that all associated fees have been paid.
This can be more challenging than it sounds, as nearly every IP office uses different documents and systems for filing these changes, and you must adhere to their unique requirements. Failure to adhere to individual requirements may mean the application to file the change is completed inaccurately and may be denied.
How Should You Start an IP Transfer?
Ensuring that you identify the IP assets and territories to be prioritized, correctly file any necessary documentation, and pay any required fees will lead to a successfully managed change in IP ownership. Given the potential complexities of these steps, however, it is again advised that companies looking to manage a change in ownership seek professional assistance, as the potential ramifications of an inaccurately managed transaction can be disastrous.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
