Transfer of IP rights in Germany

  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? 

A German patent can be transferred by legal transaction and by law (Sec. 15 of the German Patent Act (“PatG”)). 

It is not required to record the assignment in the German patent register to become effective. However, the assignee receives the legal status of the patent applicant or owner only upon completion of the transfer in the patent register. As long as the transferee is not named as applicant or owner in the register, he is not entitled to undertake any valid procedural steps before the patent office or before courts  (unless he has been duly authorized by the person who is still registered as applicant or owner),  sec. 30(3) s. 2 German Patent Act (“Patentgesetz”, “PatG”).

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

The request should be filed using the application form issued by the German Patent and Trademark Office (“DPMA”). However, the Office will also accept requests in any other written form. The following requirements must be met:

  1. The request is signed by the registered owner and the new owner; or
  2. The request is a only signed by the new owner

and

  1. accompanied by a declaration signed by the registered owner that he consents to the registration of the assignment; or
  2. accompanied by supporting documents evidencing the assignment, such as a transfer agreement or a declaration of transfer, or a certificate of inheritance. 
2.1 Are original supporting documents essential or are copies sufficient?

Copies of the supporting documents are sufficient.

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

There are no legalization and/or notarization requirements. However, the German Patent and Trademark Office may request further evidence if there are reasonable doubts about the transfer.

2.3 Is there a must to use a specific form?

NA

The registration of patent assignment only has declarative effect and is not required for the transfer to be valid and effective. However, as long as the transferor is named as owner or applicant in the register, it is assumed that he only is entitled to undertake any procedurally valid steps before authorities (patent office and courts). As long as the patent assignment is not recorded, the transferee – although being the owner of the patent/patent application – cannot be a party to (infringement) proceedings and is not entitled to file any action such as an appeal (sec. 30(3) s. 2 PatG).

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

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.

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

If the applicant or owner has its place of residence or seat in Germany or in the EEA or Switzerland, there is no need to appoint a professional representative in Germany. However, if the applicant or owner has its place of residence or seat outside Germany but in the EEA or Switzerland, it can be useful to appoint a person or legal entity domiciled in Germany 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. A domestic representative is inter alia necessary to record a patent assignment in the register.

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

There are fees due for the recording of a patent assignment.

Patents: Licensing

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

In general, there are exclusive and non-exclusive licences as well as compulsory licences. 

Whereas non-exclusive licences cannot be recorded in the patent register at all, the recording of an exclusive licence in the patent register is possible but not required for the validity of the licence (sec. 30(4) PatG). The recording of the licence in the patent register has no substantive significance for the legal relationships of the contracting parties to each other and of the licensee vis-à-vis third parties.

The registration of the license can already be applied for when the patent application is still pending but the license will only be recorded once the patent has been granted.

The exclusive licence, however, can only be recorded if no willingness to grant a licence to anyone pursuant to Sec. 23 (1) PatG is declared, i.e. the willingness of a patentee to allow anyone to use the invention in return for reasonable remuneration.

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

A prerequisite for the recording of an exclusive licence in the patent register is a written request by the patentee or the licensee (even if the law does not explicitly prescribe this form). There is no specific form which must be used.

If the application is filed by the licensee, the consent of the applicant or - after the grant of the patent - of the registered patentee or his successor in title shall be submitted in writing; if the registration is applied for by the applicant or patentee, the consent of the licensee shall be submitted. 

8.1 Are original supporting documents essential or are copies sufficient?

As long as the consent of the applicant or - after the grant of the patent - of the registered patentee is proven in writing, it is usually not necessary to also provide a copy of the license agreement.

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

There are no legalization and/or notarization requirements. However, the German Patent and Trademark Office may request further evidence if there are reasonable doubts about the license grant.

8.3 Is there a must to use a specific form?

See above.

Recording the licence in the patent register only has declarative effect.

The registration is not necessary for the establishment of the exclusive licence right, which is independent of the recording. The record in the patent register only has the legal effect of preventing the validity of a declaration of willingness to grant a licence – i.e. the willingness of a patentee to allow anyone to use the invention in return for reasonable remuneration – and its recording in the register (sec. 23 (2) PatG). 

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

If the applicant or owner has its place of residence or seat in Germany or in the EEA or Switzerland, there is no need to appoint a professional representative in Germany. However, if the applicant or owner has its place of residence or seat outside Germany but in the EEA or Switzerland, it can be useful to appoint a person or legal entity domiciled in Germany 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. A domestic representative is inter alia necessary to record a patent assignment in the register.

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

For the request for recording or cancellation of an exclusive licence, a fee of 25 EUR has to be paid.

Patents: Pledge

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

Yes, patents can be pledged, usually through a pledge agreement. The recording in the register is not required.

However, the recording of the pledge in the register is possible upon application (sec. 29 DPMAV). There is a specific form which may be used.

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? 

A trademark can be transferred by contract or by law (Sec. 27 (1) of the German Trademark Act (“Markengesetz”, “MarkenG”). 

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

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

The request should be filed using the application form issued by the German Patent and Trademark Office (“DPMA”). However, the Office will also accept requests in any other written form. The following requirements need to be met:

  1. The request is signed by the registered owner and the new owner; or
  2. The request is only signed by the new owner 

and

  1. accompanied by a declaration signed by the registered owner that he consents to the registration of the assignment; or
  2. accompanied by supporting documents evidencing the assignment, such as a transfer agreement or a declaration of transfer, or a certificate of inheritance. 
2.1 Are original supporting documents essential or are copies sufficient? 

Copies of the supporting documents are sufficient.

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

There are no legalization and/or notarization requirements. However, the German Patent and Trademark Office may request further evidence if there are reasonable doubts about the transfer.

2.3 Is there a must to use a specific form?

NA

Recording the assignment in the trademark register has only declarative effect.

However, in proceedings before the German trademark office (DPMA) and the Federal Patent Court, the new owner may only assert rights based on the trademark if the office has received an application for registration of the assignment. 

Moreover, there is a legal assumption that the trademark is owned by the person entered in the register as proprietor.

However, this assumption can be rebutted. Also, the assumption rule does not mean that a bona fide acquisition of the trademark from a person entered in the register who is not in fact the proprietor of the trademark is possible. 

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

All parties must agree on the assignment of the trademark.

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

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. 

Registered trademarks can only be divided after the opposition period has expired.

The request for registration of a partial assignment should be filed by using the application form issued by the German Patent and Trademark Office. 

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

No representative is required for the mere filing of the request for recording of the transfer, even if the applicant does not have a registered office, residence or branch in Germany. However, if the request is not granted without further ado, a representative (lawyer or patent attorney from the EU or EEA) must then be appointed.

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

The transfer of a trademark to a legal successor is generally free of charge if the trademark is transferred in its entirety. However, if only a partial transfer is to be made, i.e. the trademark is to be transferred only for certain goods or services, a fee of EUR 300 is due.

Trademark: Licensing

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

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 Germany. The Licensee may grant sub-licences himself, provided he is authorised to do so by the Licensor, and his own licence covers the scope of the sub-licence granted.

A trademark license may be recorded upon request. However, registration is not required for the licence to be valid.

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

The request for registration of a licence can be filed by either the trademark proprietor or the licensee with the written consent of the respective other party. The application form provided by the German Patent and Trademark Office should be used.

9.1 Are original supporting documents essential or are copies sufficient? 

Copies of supporting documents are sufficient.

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

There are no legalization and/or translation requirements.

9.3 Is there a must to use a specific form?

See above.

No substantive consequences are associated with the registration of the licence. The registration is for information purposes only.

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

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 Germany (unlike the assignment of a trademark). 

However, there are no specific formalities in case a trademark is only partially licenced. (The (limited) scope, however, must be indicated in the application form.

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

No representative is required for the mere filing of the request for recording of the license, even if the applicant does not have a registered office, residence or branch in Germany. However, if the request is not granted without further ado, a representative (lawyer or patent attorney from the EU or EEA) must then be appointed.

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

The fee for the recording of the licence in the register is EUR 50. 

Trademark: Pledge

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

Yes, trademarks can be pledged. It is not required to record the pledge in the trademark register. 

However, the registration has relevance insofar as cancellation of the trademark as a result of surrender can only take place with the consent of the registered lien holder.

Portrait of Nikolas Gregor
Dr. Nikolas Gregor, LL.M. (Boston University), Maître en droit
Partner
Hamburg
Portrait of Petra Goldenbaum
Petra Goldenbaum
Counsel
Hamburg
Lisa Wernecke