Transfer of IP rights in Austria

A patent can be transferred by legal transaction, court order, will or succession. 

The assignment must be recorded to become effective.

Either a written application or court order for entry in the patent register are sufficient. If the patent is transferred under a contract, a declaration by the parties or their representatives recording their mutual consent can be filed instead of the contract itself. 

2.1 Are original supporting documents essential or are copies sufficient?

Submission of a copy is sufficient. 

2.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalization or notarization requirements. A translation into German is required by law, but the office also usually accepts English language documents.

2.3 Is there a must to use a specific form?

No specific form is required.

Without recording in the register, the assignment of the patent is not valid. 

The record in the patent register has constitutive effect.

Each co-owner can sell his share of the patent without the consent of the other co-owners. However, the agreement of all parties involved is required for the transfer of the whole patent.

If the applicant or owner has its place of residence or seat in Austria, there is no need to appoint a professional representative in Austria. 

If the applicant or owner has its place of residence or seat outside Austria but in the EEA or Switzerland,  it does not require a domestic representative, but must appoint a person or legal entity domiciled in Austria as its authorized recipient for communications from the office.

If the applicant or owner has its place of residence or seat outside the EEA and Switzerland, the appointment of a professional representative is mandatory.

EUR 128 per application.

In general, there are exclusive and non-exclusive licences as well as compulsory licences. All of these can be recorded in the patent register.

The transfer of the licence right becomes effective when the contract is concluded between the parties. Vis-à-vis third parties, the licence rights become effective when the license is recorded in the patent register. 

However, even if the licence right has not yet been recorded in the patent register, the owner of an exclusive licence can take legal action against possible patent infringements.

Either a written application or court order is sufficient. The licence agreement must be enclosed. 

8.1 Are original supporting documents essential or are copies sufficient?

Submission of a copy of the instrument concerned is sufficient. 

8.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalization or notarization requirements. A translation into German is required by law, but the office usually also accepts English language documents.

8.3 Is there a must to use a specific form?

No specific form is required.

It will not become effective vis-à-vis third parties. 

Recording the licence in the patent register has declarative effect.

If the applicant or owner has its place of residence or seat in Austria, there is no need to appoint a professional representative in Austria. 

If the applicant or owner has its place of residence or seat outside Austria but in the EEA or Switzerland,  it does not require a domestic representative, but has to appoint a person or legal entity that is domiciled in Austria as its authorized recipient for communications from the office.

If the applicant or owner has its place of residence or seat outside the EEA and Switzerland, the appointment of a professional representative is mandatory.

EUR 128 per application.

Yes, patents can be pledged. 

It is debated whether recording pledges on patent rights has declarative or constitutive effect. Thus, it is recommended to record pledges in the patent register to ensure that they become effective against third parties.

A trademark can be transferred by contract or by law. 

Recording the transfer is not required for the assignment to become effective, but is recommended.

If the transfer of rights is based on a contract, evidence may be provided through a joint written statement by the assignor and the assignee. Alternatively, a document from which the agreement of both parties on the transfer of rights becomes evident may be provided.

If the transfer of rights was effected by law, documentary proof must be furnished, such as for example an extract from the commercial register.

2.1 Are original supporting documents essential or are copies sufficient? 

Copies are sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalization or notarization requirements. A translation into German is required by law, but usually the office also accepts English language documents.

2.3 Is there a must to use a specific form?

No specific form is required.

If the trademark assignment is not recorded, it has no legal effect against third parties.

Recording the assignment in the trademark register has declarative effect.

All parties must agree on the assignment of the trademark.

A so-called trademark division, where the transfer takes place for only part of the goods or services for which it is registered, is possible. These must not overlap with the goods or services remaining in the original trademark or with those of any previous divisions. A territorial division of the trademark (e.g. by federal states) or a division and separate transfer of individual trademark components (e.g. verbal and figurative components) is not permitted.

Division is effected by submitting an informal declaration of division, which specifies the mark to be divided as well as the goods or services to be divided. It is not necessary to give reasons for the request for division. The official fee is EUR 200.
Registered trademarks can only be divided after the opposition period has expired, i.e. after 3 months from publication of the registration in the Trademark Gazette.

If the applicant or owner has its place of residence or seat in Austria, there is no need to appoint a professional representative in Austria. 

If the applicant or owner has its place of residence or seat outside Austria but in the EEA or Switzerland,  it does not require a domestic representative, but must appoint a person or legal entity domiciled in Austria as its authorized recipient for communications from the office.

If the applicant or owner has its place of residence or seat outside the EEA and Switzerland, the appointment of a professional representative is mandatory.

EUR 128 per application.

In general, a trademark can be the subject of exclusive or non-exclusive licences for all or part of the goods or services for which it is registered and for all or part of Austria.

The transfer of the licence right becomes effective when the contract is concluded between the parties. Vis-à-vis third parties, the licence rights only become effective upon recording the license in the trademark register.

However, even if the licence right has not yet been recorded in the trademark register, the owner of an exclusive licence can take legal action against possible trademark infringements.

The licence agreement must be enclosed. 

9.1 Are original supporting documents essential or are copies sufficient? 

Copies are sufficient.

9.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalization or notarization requirements. A translation into German is required by law, but the office usually also accepts English language documents.

9.3 Is there a must to use a specific form?

No specific form is required.

The trademark licence does not have any effect vis-à-vis third parties.

Recording the licence in the trademark register is declarative.

The trademark can be licenced for all or part of the goods or services for which it is registered and for the whole or part of Austria (unlike the assignment of a trademark). The precise definition of the licence area is an essential element: if a certain licence area is not defined and the contract does not contain any other reference to a certain licence area, it can be assumed in case of doubt that the licence was granted for the entire area where the trademark enjoys protection. 

If the applicant or owner has its place of residence or seat in Austria, there is no need to appoint a professional representative in Austria. 

If the applicant or owner has its place of residence or seat outside Austria but in the EEA or Switzerland,  it does not require a domestic representative, but must appoint a person or legal entity domiciled in Austria as its authorized recipient for communications from the office.

If the applicant or owner has its place of residence or seat outside the EEA and Switzerland, the appointment of a professional representative is mandatory.

EUR 128 per application.

Yes, trademarks can be pledged. 

It is debatable whether recording pledges on trademark rights have declarative or constitutive effect. Thus, it is recommended to record pledges in the patent register to ensure that they become effective against third parties.