Maintaining intellectual property records can be complicated for in-house legal teams and their legal advisors at times—not least because of the detailed and diverse documents and formalities required by different countries and jurisdictions. In this article, we answer some frequently asked questions about IP record management and share some practical insights to help you effectively plan your IP recordals projects.
To safeguard IP ownership effectively, you also need to maintain accurate intellectual property records. However, completing IP recordals projects can be complex, since they require specialist knowledge and experience, as well as a dedicated budget and resources.
Preparing IP recordals documentation is a big part of that complexity, but project monitoring also adds to the challenge. While a change in business circumstances might require immediate action, for example, a legal team could choose to postpone an IP recordal until the renewal deadline to save costs.
Alternatively, a recordal may have been filed but requires status monitoring for additional or updated paperwork. Understanding local IP laws in different regions can help you foresee potential issues and plan and allocate the necessary budget and resources.
How to Prepare for IP Recordals Projects Effectively
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Q: "Recordals Meaning": What Are Intellectual Property (IP) Ownership Records—Why Is it Important to Update Them?
The purpose of IP records is to enable public awareness of the details of any existing intellectual property ownership rights. This is so that both the public can recognize and respect IP rights, and so competitors can know the parameters of these rights to avoid interference.
Third parties looking to enter into license agreements regarding your intellectual property ownership may also rely on these contact details to initiate conversations with you. If they can't get in touch, you could be losing out on a valuable trade.
Additionally, the records must contain up-to-date contact information to enable the relevant authorities to get in touch at a moment's notice. Outdated information about your rights may hinder important correspondence, or you may miss out on receiving royalty payments.
Goods can be seized at customs if there are inconsistencies in details, and you'll want to avoid any penalty for your company or client's brand. Discrepancies in IP records in some territories could even mean that new applications or renewals might be rejected, let alone posing a problem for your current project.
As can be seen, keeping all the necessary items updated won't just give you peace of mind, but it can also save you from costly mistakes. Doing this right saves money and time, too. With a well-maintained intellectual property record, team members will be able to focus on their other tasks, rather than scrambling to try to get the fixes in place at the last minute
Q: Why Do Intellectual Property Records Become Out of Date—What Are the Common Triggers?
There are several reasons why you might need to start an IP recordals project. Perhaps your corporation is involved in a planned or recent merger or acquisition, divestiture, renaming, or some other restructuring that will impact your IP portfolio.
Whenever a company undergoes a significant change or restructuring, IP counsel should think about whether they need to update intellectual property records. Sometimes it's obvious. If you acquire or merge with another company, there will almost always be a need to record the change of ownership of any trademark assets.
But it's not just on these momentous occasions that a business might need to be thinking about updating intellectual property records. Perhaps the most significant risk businesses run when it comes to recordals is missing something in the general course of operations, which becomes problematic at a later date.
Therefore, it makes sense for all companies not just to have a means of reliably identifying scenarios in which they should be thinking about recordals—but also a checklist for how to update their intellectual property records effectively. Ideally, companies should also treat recordals as an ongoing issue, either in conjunction with an external provider or in-house.
Q: How Should I Prepare for IP Recordals Projects?
Filing an IP recordal with accurate paperwork and ensuring that the relevant authorities accept it requires a substantial amount of administrative work.
The need for a dedicated resource to assess, execute, and monitor the progress of a recordal filing is an essential factor for an in-house legal team to consider when planning their project.
By considering circumstances, such as specific application requirements in different countries, regions, and jurisdictions, you can plan a realistic timeline. This timeline will serve as an indicator of potential risks or issues that may require additional attention so that the team can be prepared—allowing for an expedited process rather than the dreaded bottlenecking.
Preparing a project timeline also helps provide a realistic overview of the budget and resources required to complete the project. Thus, it can help determine whether there's a need to outsource the IP recordals project to an external specialist, and where those resources may be most effective.
Q: How Do I Update IP Ownership Records Across Different Jurisdictions Cost-Effectively?
The importance of defining your goals in IP recordals projects cannot be overstated. This will help you assess which intellectual property records must be updated quickly and which can wait.
- The importance of prioritizing IP recordals projects
Prioritization can be a crucial element of IP record management. If you have recently acquired another company, for example, you'll likely need to prioritize updating IP ownership information related to the newly acquired assets before you look at your existing portfolio. Similarly, there may be jurisdictions in which your business is more active, or where it faces more threats from competitors or counterfeiters. It makes sense to establish where the risk of failure is highest and prioritize your IP recordals work accordingly. This ensures you always cover your bases.
- Cost management
All IP recordals projects have costs attached to them, and with large portfolios across multiple jurisdictions, those costs can add up very quickly. These costs include official fees associated with changes to the record, the cost of engaging agents where necessary to file official documents, and the various internal expenses related to the sheer time and resources required to manage the project.
However, there are also various hidden costs, such as translating documents into local languages, aligning customs recordals to ensure they're up-to-date, and the costs of legalizing documents. Some jurisdictions also put strict deadlines on recording changes of ownership information, and failure to meet these can lead to extra expense while also placing the asset at risk.
Understanding the nature and amount of these costs will help you manage your IP recordals projects more effectively. It may be that, once you have analyzed the size of the task in front of you, you decide only to undertake a partial recordals project, in which you deal with the critical assets and leave the rest until you can justify more of an investment.
This approach will be faster but is likely to cost more in the long run, however, while leaving you open to higher risk. That's why we recommend working with an IP recordals specialist.
- Internal management versus outsourcing IP recordals projects
If taking on recordals projects in-house, be sure to account for all time and cost elements, so there are no surprises along the way. You'll know the process is being well-managed if things are going smoothly. If you decide on an external team to help you, they should be open to consulting with you every step of the way to ensure you're comfortable with the relationship and workflow.
Q: What Documents Are Needed to Record a Change in IP Ownership?
Now let's consider the documentation that will be necessary for the recordals process. Having everything you need from the get-go will make for a smoother experience, so we want to make sure you're adequately prepared.
- Applications to record a change or assignment (recordal forms)
Arguably, the most critical documents in an IP recordals project are the applications to record a change or assignment on the relevant register. These forms can be accessed through national patent and trademark offices, and can generally be filed in hard copy or online.
These recordal forms will require the details of the IP, as well as of the assignment or change that has led to the recordal. Keep in mind that, when completing these forms, owners must provide details of the IP itself—including, for example, any relevant reference numbers and descriptions. Don't leave those out of the equation. Be as thorough as possible.
Additionally, owners will be required to provide their name and contact details, along with those of the party or parties to whom the property is being assigned. These forms also need the date from which the assignment is to be deemed effective.
—> Filing these forms is usually accompanied by a fee, which, although typically nominal, has to be paid for each separate IP change. In some territories, including the UK, a fee document must be submitted along with the submission of any document that costs money. IP owners must, therefore, be aware of any fees required in the filing of their application, along with any further forms that need to accompany those fees.
- Evidentiary documents
Other evidentiary documents may also be required to update the intellectual property records, depending on the circumstances. For example, assignment agreements could be required. These serve to support any other official documentation that is needed for the offices in those territories where the IP is registered and enable the primary application forms to be completed accurately.
—>Although not a document itself, document legalization is a key facet in IP recordals projects. Document legalization is effectively a stamp of approval from a state, verifying the official status of a document. It's especially essential to secure document legalization during a project where the IP is registered in multiple territories.
If you choose to hire an IP recordals specialist to handle the project, a power of attorney document will also be needed. This enables your ex
How to Prioritize IP Recordals Projects
Our clients often ask us how to prioritize the management of large recordal projects. Based on our experience, these are the top 10 factors you need to consider when organizing a significant IP recordals project:
- 1. New filings
Do you have any new filing projects either in progress or in the pipeline, such as in the name of a new owner?
If so, it's important to identify the countries involved and prioritize them in your recordal project to avoid unnecessary citations or office actions due to inconsistencies in intellectual property ownership on record (be careful because this issue will come up in a large number of countries).
- 2. Renewals
Do you need to file any ownership or name changes in advance of the renewal deadline? Do you want to renew the trademark in the new owner's name?
The answers to these questions will vary depending on the nature of the change, the document requirements in a given jurisdiction, the timeline for the change, and the renewal deadline. It's essential to consider renewals when setting your priorities to avoid filing a renewal incorrectly (and thus endangering the entire registration).
- 3. Customs recordals
In some countries, as we learned, your goods may be seized at customs if the trademark ownership information is not current and entirely accurate. Be sure to prioritize any countries where you may expect such issues.
- 4. Late filing fee countries
A handful of countries impose fines for the late filing of ownership changes. The timeframe depends on the country and can range anywhere between four weeks and 12 months. Fees may compound, making a simple change of name recordal inordinately expensive if you wait too long (for insights on managing ownership changes effectively, download our eBook 'How to Succeed When Transferring IP Assets').
- 5. Licenses
Do you have license agreements in place in a particular country? If so, discrepancies between the licensor and the registered IP owner can result in delays or non-payment of royalties and other financial consequences. Be sure to prioritize these countries in your recordal project to avoid problems that can have an immediate financial impact.
- 6. Key territories for the business
What are your key territories? Depending on the country and your position in the market, you may choose to prioritize certain countries to ensure your project plan (and budget) are in line with the needs of the business.
- 7. Territories with legal proceedings in progress
Do you have ongoing litigation, oppositions, or other such legal matters in any territories covered by the intellectual property ownership recordal project? If so, you should prioritize this recordal work, since having an incorrect IP owner on record may cause significant problems for such proceedings.
- 8. Associated trademarks (all-or-nothing)
There are countries where, due to local legal requirements, special attention must be paid to "similar" trademarks when there is an assignment of rights. Likewise, there are a handful of countries requiring all IP rights in the name of an entity to be updated simultaneously (change of name/address and mergers). Giving these countries priority will help avoid issues down the road with new filings, renewals, etc.
- 9. International registrations (WIPO)
Don't forget about your international registrations! Let's say you file a change in China but don't submit the change against the International Registration (IR) designating China; then you will likely receive an office action from the examiner there.
While you may not encounter this problem with the national patent and trademark offices for all countries designated by the IR, you can bet you'll face it in a few key territories (which, again, should be prioritized in your recordal project for your intellectual property ownership).
- 10. Are there any further planned changes on the horizon for the corporations involved?
For instance, is the assignor or current IP holder foreseen to undergo a name change, merger, or be dissolved entirely in the near future? Are there any other divestitures on their way that you know of? Will the entity remain under your corporation's ownership, or will it be part of the divestiture?
In-house versus Outsourcing IP Recordals
Given the varied timeframes and differing documentation requirements, clients wishing to undergo an IP recordals project should consider hiring external agents with expertise in managing recordals in multiple territories.
At Questel, we help secure the best outcome for clients while removing the burden of updating intellectual property records. This way, your intellectual property ownership recordals are conveniently handled for you. You can be confident that you won't be required to do anything further, unless absolutely necessary.
While it's certainly possible to manage an IP recordals project in-house, it's likely to be time-consuming and resource-intensive. Questel specializes in handling projects swiftly and with the utmost care and attention paid to details. Our successful process is all thanks to a team with the expertise and tools necessary to reduce the time and costs of preparing and filing necessary documentation.
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.
