Transfer of IP rights in Colombia

  1. Patents: Assignment
    1. 1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 
    2. 2. Which formalities must be met to record a patent assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the patent assignment? Does the record in the patent register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the patent is held by more than one proprietor? 
    5. 5. Is there a need to appoint a domestic professional representative?
    6. 6. Which official fees (if any) arise from recording a patent assignment?
  2. Patents: Licensing
    1. 7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 
    2. 8. Which formalities must be met to record a patent licence? Which supporting documents are required?
    3. 9. What are the legal consequences of not recording the patent licence? Does the record in the patent register have declarative or constitutive effect?
    4. 10. Is there a need to appoint a domestic professional representative?
    5. 11. Which official fees (if any) arise from recording a patent licence?
  3. Patents: Pledge
    1. 12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?
  4. Trademarks: Assignment
    1. 1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 
    2. 2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the trademark assignment? Does the record in the trademark register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the trademark is held by more than one proprietor? 
    5. 5. Are there specific formalities in case a trademark is only partially assigned? 
    6. 6. Is there a need to appoint a domestic professional representative?
    7. 7. Which official fees (if any) arise from recording a trademark assignment?
  5. Trademark: Licensing
    1. 8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 
    2. 9. Which formalities must be met to record a trademark licence? Which supporting documents are required?
    3. 10. What are the legal consequences of not recording the trademark licence? Does the record in the trademark register have declarative or constitutive effect? 
    4. 11. Are there specific formalities in case a trademark is only partially licenced? 
    5. 12. Is there a need to appoint a domestic professional representative?
    6. 13. Which official fees (if any) arise from recording a trademark license?
  6. Trademark: Pledge
    1. 14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Patents: Assignment

1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 

Patent assignments may be done by law when the inventor is an employee or contractor, or through a private transaction which must be registered before the Colombian PTO (SIC).

Failure to register shall cause the transfer to be unenforceable against third parties.

2. Which formalities must be met to record a patent assignment? Which supporting documents are required?

Any interested party may request the recording of a patent assignment to the Colombian PTO by filing the assignment contract and a POA if not filed directly by the assignee.

2.1 Are original supporting documents essential or are copies sufficient?

Original documents are not necessary, the filing is on a digital platform. 

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

Documents in a foreign language will need to be filed together with a simple translation. Neither the assignment contract nor the POA need to be notarized or legalized.

2.3 Is there a must to use a specific form?

There is no specific form to be used, yet the invention and parties must be clearly identified. 

If the assignment is not recorded, it does not have effects on third parties. The record of patent assignments has only declarative effects.

4. Are there specific formalities in case the patent is held by more than one proprietor? 

There are no specific formalities. If the percentage distribution of rights is not stipulated, it will be considered as owned in equal parts. 

5. Is there a need to appoint a domestic professional representative?

Yes. It is necessary to indicate a procedural domicile in national territory.

6. Which official fees (if any) arise from recording a patent assignment?

The patent assignment record has an administrative fee that amounts to approximately USD $ 95. If the patent application is still pending, assignment will be recorded at no extra cost.

Patents: Licensing

7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 

There are two forms of patent licenses, voluntary licenses and compulsory licenses, both may be recorded before the Colombian PTO. 

8. Which formalities must be met to record a patent licence? Which supporting documents are required?

Any interested person may request the recording of a patent license to the Colombian PTO by filing the license contract and a POA if not filed directly by the licensee.

8.1 Are original supporting documents essential or are copies sufficient?

Original documents are not necessary, the filing is on a digital platform. 

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

Documents in a foreign language will need to be filed together with a simple translation. The supporting documents do not need to be notarized nor legalized

8.3 Is there a must to use a specific form?

There is no specific form to be used, yet the patent and parties must be clearly identified.

Unrecorded licenses do not have effects on third parties. 

10. Is there a need to appoint a domestic professional representative?

Yes. It is necessary to indicate a procedural domicile in national territory.

11. Which official fees (if any) arise from recording a patent licence?

In the case of voluntary licenses, the administrative fee to pay is approximately USD $ 45 when the application is pending, and USD 105 when the patent has been granted.

In the case of compulsory licenses, the administrative fee to pay is approximately USD $ 470.

Patents: Pledge

12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?

Patent pledge is not recognized by the Colombian laws.

Trademarks: Assignment

1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 

Trademark assignments are done through a private transaction which may be registered before the Colombian PTO (SIC).
Failure to register shall cause the transfer to be unenforceable against third parties.

2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?

Any interested party may request the recording of a trademark assignment to the Colombian PTO by filing the assignment contract and a POA if not filed directly by the assignee.

2.1 Are original supporting documents essential or are copies sufficient? 

Original documents are not necessary, the filing is on a digital platform. 

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

Documents in a foreign language will need to be filed together with a simple translation. Neither the POA nor the assignment need to be notarized or legalized.

2.3 Is there a must to use a specific form?

There is no specific form to be used, yet the trademark(s) and parties must be clearly identified. 

Unrecorded assignments do not have effects on third parties. 

4. Are there specific formalities in case the trademark is held by more than one proprietor? 

No, there are no specific formalities. If the percentage distribution of rights is not stipulated, it will be considered as owned in equal parts. 

5. Are there specific formalities in case a trademark is only partially assigned? 

No, there are no specific formalities. If the percentage distribution of rights is not stipulated, it will be considered as owned in equal parts. 

6. Is there a need to appoint a domestic professional representative?

Yes. It is necessary to indicate a procedural domicile in national territory.

7. Which official fees (if any) arise from recording a trademark assignment?

The recording of a trademark assignment has an administrative fee that amounts to approximately USD $ 95 when the application has been granted. When the application is still pending, there is no extra fee.

Trademark: Licensing

8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 

There is one form of trademark license, voluntary licenses between private parties. It must be recorded in order to be enforceable to third parties. 

9. Which formalities must be met to record a trademark licence? Which supporting documents are required?

Any interested person may request the recording of a trademark license before the Colombian PTO by filing the license contract and a POA if not filed directly by the licensee.

9.1 Are original supporting documents essential or are copies sufficient? 

Original documents are not necessary, the filing is on a digital platform. 

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

Documents in a foreign language will need to be filed together with a simple translation. The supporting documents do not need to be notarized nor legalized.

9.3 Is there a must to use a specific form?

There is no specific form to be used, yet the patent and parties must be clearly identified.

Unrecorded licenses do not have effects on third parties. 

11. Are there specific formalities in case a trademark is only partially licenced? 

There is no specific formality.

12. Is there a need to appoint a domestic professional representative?

Yes. It is necessary to indicate a procedural domicile in national territory.

13. Which official fees (if any) arise from recording a trademark license?

The administrative fee to pay is approximately USD $ 45 when the application is pending, and USD 105 when the trademark has been granted.

Trademark: Pledge

14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Trademark pledge is not recognized by the Colombian laws.

Portrait of Karl Mutter, LL.M.
Karl Mutter, LL.M.
Partner
Bogotá
Portrait of Lola Kandelaft, LL.M.
Lola Kandelaft, LL.M.
Associate Director
Bogotá