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  • Writer's pictureCassandra L. Wilkinson

Don't Wait to Record Changes in Ownership of International IP

Part of my position as an international paralegal is handling the recordation of ownership changes in various countries. This can be challenging when you have a client with a large, worldwide IP portfolio that frequently undergoes legal entity changes, such as conversion from a corporation to a limited liability company. It is even more challenging when there are several changes that were not previously recorded and you have to play catch up.

Changes in ownership should be recorded as the changes occur for several reasons, but the biggest is availability of signators. Some countries require the signatures of both the Assignor and Assignee, so if you wait several years until a trademark comes up for renewal and then realize that you need the Assignee’s signature, you may have lost contact with the individual or the company may have dissolved, etc. You may also need original signature documents in order to meet some countries filing requirements.
Another consideration is that some clients undergo mergers and various types of entity changes fairly regularly. So, if you wait until you renew a trademark registration to record any owner change, you may have several transactions over the course of the ten-year registration period that need to be recorded. Each transaction must be reviewed and approved by the Trademark Office and, in some countries, the process can take many months or even years to complete. If you would like your renewal certificate to be in the name of the new owner, you should begin the recordation process sooner rather than later.
In some circumstances, such as a pending EPC application, timing of the recordation can be very important. If you want to record an owner change in an allowed European patent application, you should consider how the change will affect the designated countries once you start the validation process. Consider the following scenario:
Your European patent application has been allowed and the EPO has communicated its intention to grant the patent. You attend to payment of the grant fee and submission of translations and the EPO issues its decision to grant and publishes the patent. You begin the validation process in the countries of interest and provide Powers of Attorney and other document requirements. When is the best time to record the owner change?
My experience has been that you should record the owner change before payment of the grant fee, as soon as possible after receipt of the intention to grant, in order to allow time for the change to be recorded. Hopefully, you will receive notice of the recordation prior to the grant fee deadline so that, upon payment of the grant fee, the EPO will issue its decision to grant the patent in the name of the new owner and, therefore, any subsequent country designation will likewise be in the name of the new owner, avoiding the additional time and expense of recording the change in each validated country.
If you wait until after payment of the grant fee, after the EPO decision to grant is published, or after you begin the validation process, you will end up needing Powers of Attorney in the original owner name to complete the filing requirements for validation, and then need Powers of Attorney in the new owner name in order to record the owner change, as well as assignment/change of owner documents that meet each country’s filing requirements.
We are not always made aware of changes in ownership and sometimes delays in recording ownership changes cannot be avoided. However, if and when possible, we should stay on top of recording any owner changes to avoid unnecessary time and expense.
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