Ladas & Parry LLP

UPCOMING INTELLECTUAL PROPERTY RECORDAL PROJECT? KEEP THESE TIPS IN MIND

Keeping Intellectual Property (IP) recordal projects under control can sometimes be a daunting task. With the exception of certain transactions, such as stock purchase agreements, recently acquired intellectual property rights likely need to be transferred into the name of a new owner in each jurisdiction where such rights exist. In many instances, this can involve hundreds or even thousands of trademarks and patents. It is important to remember that timely recordal of a change of ownership is critical to protect the ongoing validity and enforcement of intellectual property rights for several reasons, including:

TRANSFER INSTRUMENTS

In order to reflect the new owner of the patent or trademark as the “owner of record”, it is necessary in many jurisdictions for counsel to prepare separate assignment documents where such rights exist. In some jurisdictions, a copy of a “general” worldwide assignment may be acceptable. Most countries provide a mechanism for filing and recordal of a change of ownership at a central registry, although the form and substance of these documents can vary from jurisdiction to jurisdiction.

TIME LIMITATIONS

Parties who have recently acquired IP should prioritize those IP rights that are subject to international filing systems, such as the Patent Cooperation Treaty (PCT) and the European Patent Convention, which may have special requirements and time limitations. In this respect, it is recommended that the acquiring company engage counsel experienced in the worldwide transfer of intellectual property rights in order to avoid costly delays that could result in significant increases in transfer costs.

HIDDEN COSTS

VAT and stamp taxes, legalization costs, ensuing official actions and publication requirements can all contribute to the overall costs of recording IP ownership transfers. Experienced intellectual property counsel familiar with the worldwide recordal of ownership transfers should bring these issues to the acquiring company’s attention prior to filing at the national IP offices.

CONCLUSION

Companies that have recently acquired intellectual property rights should carefully consider how to effectively address the time, effort and expense of multi-jurisdictional IP Recordals. Ladas & Parry has extensive experience in the in-house preparation and filing of multi-lingual documentation to record assignments, mergers and company name changes on a worldwide basis at all national patent and trademark offices. Unlike most firms, Ladas & Parry has the ability to prepare documentation in-house conforming to the law and practice in every jurisdiction throughout the world, creating a streamlined and efficient process benefitting clients with global IP portfolios with efficiency of cost.

Please call or e-mail us with any questions or if we can furnish you with an estimate to transfer any recently acquired IP rights. Please visit www.ladas.com/ip-recordals or please contact slebson@ladas.com, lbryer@ladas.com or transactions@ladas.com for more information.

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