Transfer of IP rights in China

A patent can be assigned by law or transaction. The parties should enter a patent assignment agreement and record the assignment with the patent administrative authority under the State Council, i.e. China National Intellectual Property Administration (“CNIPA”).

The law requires the recordal of the assignment. 

2.1 Are original supporting documents essential or are copies sufficient?

Original copies are needed;

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

Notarisation is not needed. The translation is required if the application document is in English;

2.3 Is there a must to use a specific form?

Yes, an application form for change of description items.

Detailed explanation is as below:

For patent assignment registration, the following documents are required:

1. An application form for change of description items (can be downloaded from the website of CNIPA), which should be submitted electronically if the patent application was filed electronically;
2. Official fees;
3. Original assignment/transfer contract. If there are multiple patent right holders, documents proving all the right holders agree to the assignment or transfer is required.
4. If the contract is in English, it is required to be translated into Chinese. Legalisation or notarisation is not required;
5. If the assignor is a mainland Chinese citizen or organisation, and the assignee is outside of mainland China, one is also required to submit the technology export licence or technology export contract recordal certificate;
6. Copies of the IDs of the assignor and assignee;
7. Power of attorney.

The contract is valid if both parties or the assignees are mainland China citizens or organisations. For assignment involving non-mainland citizens or organisations as assignees, the contract is valid after being examined and approved by the competent foreign trade department under the State Council. However, the assignment is not completed.

Can be deemed constitutive.

Yes.

All proprietor shall unanimously agree to the patent assignment.

Yes.

For any foreigner, foreign enterprise or other foreign organisation without any habitual residence or business address in China that seeks to deal with patent-related matters in China, it shall entrust a legally established patent agency to do so on its behalf.

The Official fee is RMB 200.

In China, there are the following types of licence: exclusive licence, sole licence, non-exclusive licence, cross licence, and sub-licence.

The law provides that licences should be recorded in the patent register (i.e. CNIPA) within three months of the date on which the licensing agreement comes into effect.

8.1 Are original supporting documents essential or are copies sufficient?

Notarised copy is sufficient;

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

Notarisation of foreign company’s ID information is needed. The translation is required if the application document is in English;

8.3 Is there a must to use a specific form?

Yes, an application form for change of description items.

The documents needed are:

• The licensing agreement recordal application form;
• The licensing agreement (original) or a notarised copy;
• The ID of the licensor and licensee;
• Power of attorney and a copy of the ID of the attorney;
• Other material. For example, if the licence agreement is in English, a translation in Chinese is needed.

The law is not clear. Can be deemed declarative as to the licence.

Not recording the patent licence will lead to the loss of benefits for recording, which are that the recordal can be used such as:

1. against bona fide third party;
2. as evidence;
3. for the determination of infringement damage; and
4. as supporting document for funds transfer.

Yes.

For any foreigner, foreign enterprise or other foreign organisation without any habitual residence or business address in China that seeks to deal with patent-related matters in China, it shall entrust a patent agency established legally to do so on its behalf.

No official fees.

Yes.

It is required to record the pledge with CNIPA, because according to the PRC Civil Code, a pledge is established when it is recorded.

A trademark can be assigned by law or transaction.

The law requires the assignor and assignee sign an assignment agreement and together apply to the trademark register, i.e., the CNIPA for recordal. Also, CNIPA will examine the application and decide whether to approve the assignment.

Yes. The law requires the recordal.

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?

Notarisation is not needed. The translation is required if the application document is in English;

2.3 Is there a must to use a specific form?

Yes, a form of “Application for Assignment/Transfer/Application for Registration of Trade Marks” will be used.

The required supporting documents are:

1. The Application for Assignment/Transfer/Application for Registration of Trade Marks;
2. The photocopy of the ID documents of the assignor and the assignee;
3. Power of attorney;
4. If the transfer is done by law, there is no need to submit the ID documents and power of attorney. Submitting the relevant evidence or legal documents is sufficient;

If the application is in a foreign language, a translation is needed.

The contact is valid. The assignment is not completed.

The record in the trademark register can be deemed to have a constitutive effect. 

Yes. There are specific requirements on filling the application form.

For example, if the trademark is jointly transferred by more than one proprietor to one person, the name and address of the original representative shall be filled in the column of the name and address of the assignor, and stamp the seal of the original representative; the name and address of the assignee shall be filled in the corresponding column and stamped with the seal. The names of the other original co-owners shall be filled in the list of names of other co-owners prior to assignment on the attached page and shall be stamped. The addresses of the other original co-owners shall not be filled in.

A registered trademark cannot be severed or divided and partially assigned.

If there is a series of trademarks, similar marks registered on similar goods should be assigned together. Otherwise, CNIPA may reject the recordal of the assignment.

Yes.

For a foreigner or foreign enterprise that does not have a permanent residence or business address within China as the assignee, it shall appoint a local firm in China responsible for receiving the legal documents.

The official fee is RMB 500/class or RMB 450/class if applied electronically.

There are the following types of licence: exclusive licence, sole licence, non-exclusive licence, sub-licence, and cross-licence.

The law provides that licences should be recorded to the trademark office (i.e. CNIPA) within three months as of the date of conclusion of the agreement. In particular, for the sub-licence of a trademark, it is not necessary to be recorded and the CNIPA is no longer accepting such licensing filings. Non-recordal does not affect the validity of the sub-licence agreement.

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?

Notarisation is not needed. Translation is required if the application document is in English;

9.3 Is there a must to use a specific form?

Yes. Trademark licence record form.

The required documents are:

1. Trademark licence record form;
2. Copies of the Licensor/Licensee’s ID;
3. Power of attorney;

Other material. For example translation of the IDs.

Can be deemed declarative as to the licence.

Not recording the trademark licence will lead to the loss of benefits for recording, which are that the recordal can be used such as:

1. against bona fide third party;
2. as evidence;
3. for the determination of infringement damage; and
4. as supporting document for funds transfer.

Partial licensing of a registered mark is not allowed.

Yes.

For a foreigner or foreign enterprise that does not have a permanent residence or business address within China, it shall appoint a domestic professional representative to handle the relevant matter. 

The official fee is RMB 150/class, and RMB 135 if applied electronically.

Yes.

It is required to record the pledge with CNIPA, because according to the PRC Civil Code, a pledge is established when it is recorded.