Transfer of patent rights in IP portfolio

In the process of transferring an IP portfolio, IP management rights and recording the information of rights transfer often become the key focus. Different companies may have different levels of rigor in maintaining their IP and related records. Enterprises need to keep their rights information records updated at all times to make the transfer of IP assets and record changes smooth. Otherwise, during the rights transfer process, the enforceability of the rights transfer will be at risk due to the impact on the timeliness of the rights.

Step 1:

Check the patent list in the asset transfer agreement with the records of the Patent and Trademark Office to see if they are consistent. Are they registered with the correct name of the original rights holder? Even small discrepancies, such as the difference between "plc" and "ltd", can cause delays or even invalidate the registered rights.

Step 2:

Contact the patent agent in each country. It is recommended that the company acquiring the portfolio select its own agent rather than the designated agent of the original right holder to avoid potential conflicts of interest. Since most countries require domestic agents to complete the transfer procedures of patent rights and also have language requirements, contacting a local agent is the best choice.

Step 3:

The intellectual property transfer agreement must be signed by both the buyer and the seller, and it is necessary to ensure that the signatory of the transfer agreement has sufficient authorization. At the same time, the signing of a power of attorney by both parties to the agreement will avoid the unexpected situation that the signatory of the agreement resigns after the transaction is completed. The authorized lawyer can complete all the paperwork required for the registration of the change of rights on behalf of the party. Even if new paperwork needs arise after the transaction is completed, there is no need to track down the authorized signatory.

If there are errors in the property registration, the validity of the IP may be jeopardized. In most jurisdictions, the documents submitted for changes in IP ownership are not strictly reviewed, and some countries do not even review them at all. This means that whether the documents meet the requirements will often not be thoroughly checked until litigation occurs. If defects are found in the documents at this time, they will often be used as a defense by the other party in the lawsuit. Therefore, it is necessary to ensure that every step of the process in each jurisdiction is correct.

Step 4:

The monitoring period is crucial. The loss of rights due to failure to pay annual fees or maintenance fees on time will have extremely serious consequences for the right holder.

As a manager of corporate intellectual property, you can check the following checklist to keep updated records of corporate intellectual property rights:

• Which IP assets have been updated and which have not been updated?
• Are the rights holders in each jurisdiction correct?
• Which latest company name should be used for the new application?
• Do the original supporting documents still exist?
• Whether the original rights holder has gone bankrupt, dissolved, relocated or changed its name
• Whether there is any change in the original rights holder
• Check whether the contact address is updated and whether the official documents use the latest address. Do not miss the reply deadline, which will cause the application or registration rights to expire.

If an IP is registered under the wrong name, the company may be unable to file a lawsuit against the infringer or apply for a temporary restraining order for infringement. For trademarks, if a third party mistakenly believes that the original right holder no longer exists, it is more likely to be preemptively registered. The above are the issues that need to be paid attention to in IP asset management. If you have more needs, you can contact Yezhima for help.