IP Recordals: From Stumbling Blocks To Stepping Stones



Questel is a true end-to-end intellectual property solutions provider serving 20,000 organizations in more than 30 countries for the optimal management of their IP assets portfolio. Whether for patent, trademark, domain name, or design, Questel provides its customers with the software, tech-enabled services, and consulting services necessary to give them a strategic advantage.
From organizational restructures to simple changes of address, your IP rights must be kept up to date as your business evolves if you are to ensure they remain valid and enforceable.
Worldwide Intellectual Property
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From organizational restructures to simple changes of address, your IP rights must be kept up to date as your business evolves if you are to ensure they remain valid and enforceable. Max Hubner, Senior Business Development Executive – Trademark Services, outlines the importance of a proactive IP recordals strategy and explains how and where to start.

As we mentioned in our previous article on trademark auditing, proactive IP rights maintenance is pivotal to the success of any trademark portfolio management program. If patent, trademark, and design registrations are not updated as your business changes, you may discover that they are not valid when you need them most, such as during enforcement, licensing, or merger and acquisition (M&A) activities.

Creating Your IP Recordals Strategy

  • When do IP rights need to be updated?

From business mergers to brand acquisitions, corporate restructures or simple changes of address, a wide range of major and minor business events can trigger the need for IP records to be updated. At each trigger point, IP recordals will need to be filed at each jurisdiction's respective patent and trademark office to maintain your rights effectively.

  • Why do IP rights need to be updated?

The IP records held by each relevant patent and trademark office are vital to your ability to enforce your rights. If your business name or address changes or you acquire a new brand portfolio, those records need to be updated to reflect the correct ownership details. If they are not, you could face difficulties proving you own those rights. Considering that the cost for the latter can be substantial, updating IP recordals proactively is evidently worth the investment.

  • When should you update IP rights?

In the pressure to complete M&A deals or organizational changes, it's easy to overlook the need to update your IP portfolio. In addition, not all businesses have the necessary resources or budget to file and manage the IP recordals process in-house.

However, if IP recordals are not filed or completed in a timely manner, the information that patent and trademark offices hold about your IP records will soon become out of date. A wrong party listed as the IP owner or discrepancies in the owner/address information may sound easy to correct, but the more time that passes or the more complex the chain of title, the harder it will become to establish your ownership rights.

Four major stumbling blocks to IP rights maintenance—and how to overcome them

We commonly see four major barriers to effective IP record management:

1. Lack of time and resources: Depending on your portfolio's size, IP recordals can require the full-time attention of a team member or a dedicated resource. This is particularly the case if you hold rights across many different jurisdictions, given the wide range of administrative formalities and differing deadlines required by each patent and trademark office.

2. Lack of consistency: In some countries, you will have to deal directly with the local patent and trademark offices for IP recordals projects; in others, you will need to work with a local agent, adding an extra, time-consuming, and costly layer of administration to the project.

3. Lack of budget: The recordals process does not come for free, with each country requiring payment of a fee to the local agent or directly to the office.

4. Lack of structure: Due to the differing requirements of each patent and trademark office, IP recordals are rarely short-term projects. To track progress in each jurisdiction effectively, you need access to the right tools and approach.

IP Recordals: From Stumbling Blocks to Stepping Stones

Everyone who has been involved in an IP recordals project will know how cumbersome, time-consuming, and admin-heavy they are for in-house IP departments and IP law firms to manage. That's why it's so important to work with a trademark administrative specialist with proven IP recordals processes and systems.

Don't let these four stumbling blocks risk undermining your IP rights. Whatever the size of your portfolio, Questel's IP recordals experts will work as a virtual IP team for your organization, managing IP record maintenance projects on your behalf via our trusted network of independent IP attorney partner firms.

10 Reasons to Outsource
IP Recordals

There are many good reasons to outsource IP recordals to a third-party specialist, such as Questel:

1. Save time and resources

2. Reduce costs

3. Access expertise and knowledge

4. Benefit from access to a wider number of agents in each country

5. Hold the service provider accountable for the project progress

6. Make the service provider responsible for retaining evidence

7. Centralize the process and all data on a single platform

8. Receive regular updates on project progress

9. Outsource all administrative tasks and burdens

10. Simplify the overall process for your team

To maximize these benefits, be sure to choose a partner who will take full responsibility for the entire IP recordals project and provide you with access to a free-of-charge platform (such as Questel's IP Services Portal) where you can check its status and download all related documents at any time.

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.

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