Transfer of IP rights in Peru

  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? 

The Patent assignments in Peru are done through a transaction, which must be registered before the Peruvian intellectual property agency (INDECOPI).

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 person may request the record of a patent assignment by filing a Modification Record Application before INDECOPI, which must necessarily contain the contract that proves the assignment, a Power of Attorney (when the owner of the patent is a legal person) with sufficient faculties and the administrative fee corresponding to a Modification record Application.

2.1 Are original supporting documents essential or are copies sufficient?

The documents presented can be copies certified by a notary public, who certifies that the documents are in conformity with the original; 

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

In the case of assignment contracts and the Power of Attorney must be signed with a notarized signature. If the document is issued abroad, it must be legalized by a Peruvian consular officer. Documents drawn up in a different language shall be filed with a Spanish translation. The presentation of official translations shall not be requested, provided that the translation is presented under the responsibility of the translator and the party concerned.

2.3 Is there a must to use a specific form?

Yes, it is necessary to use the form established by INDECOPI for the Modification Record Application.

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

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

No, there are no specific formalities.

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

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 $ 110.

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 in the industrial property registers. 

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

Any interested person may request the record of a patent license by filing a Modification Record Application before INDECOPI and the administrative fee corresponding to a Modification Record Application.

In the case of compulsory licenses, it is necessary to previously declare, by means of a Supreme Decree, the existence of reasons of public interest, emergency or national security and only as long as these reasons remain, at any time the patent can be licensed.

In cases where the applicant is a legal person, he must present a power of attorney that proves his faculties.

8.1 Are original supporting documents essential or are copies sufficient?

The documents presented can be copies certified by a notary public, who certifies that the documents are in conformity with the original.

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

The copies of the patent license contracts and the Power of Attorney must be signed with a notarized signature. If the document is issued abroad, it must be legalized by a Peruvian consular officer.

8.3 Is there a must to use a specific form?

Yes, it is necessary to use the form established by INDECOPI for the Modification Record Application.

The voluntary licenses not recorded do not have effects on third parties.

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

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 $ 110. In the case of compulsory licenses, the administrative fee to pay is approximately USD $ 140.

Patents: Pledge

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

Yes, it is possible to pledge a patent. Its record is required.

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? 

The trademark assignments in Peru are done through a transaction, which must be registered before the Peruvian intellectual property agency (INDECOPI).

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 person may request the record of a trademark assignment by filing a Modification Record Application before INDECOPI, which must necessarily contain the contract that proves the assignment, a Power of Attorney (when the owner of the trademark is a legal person) with sufficient faculties, when the owner of the trademark is a natural person, he must attach an affidavit of free disposition, and an administrative fee of Modification Record Application.

To dispose of trademarks that are social assets or are part of a community of assets, the spouse or partner of the trademark owner must intervene in the corresponding assignment or submitted an affidavit expressing assent.

2.1 Are original supporting documents essential or are copies sufficient? 

The documents presented can be copies certified by a notary public, who certifies that the documents are in conformity with the original.

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

In the case of assignment contracts and the Power of Attorney must be signed with a notarized signature. If the document is issued abroad, it must be legalized by a Peruvian consular officer.

2.3 Is there a must to use a specific form?

Yes, it is necessary to use the form established by INDECOPI.

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

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

No, there are no specific procedures

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

No, there are no specific formalities.

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

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

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

The trademark assignment record has an administrative fee that amounts to approximately USD $ 100.

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 only one form of trademark license, which can be registered with the trademark agency (INDECOPI). If the license is not recorded, it does not have effects on third parties.

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

Any interested person may request the record of a trademark license by filing a Modification Record Application before INDECOPI, which must necessarily contain the contract that proves the licensing, a Power of Attorney (when the owner of the trademark is a legal person) with sufficient faculties, when the owner of the trademark is a natural person, he must attach an affidavit of free disposition, and an administrative fee of Modification Record Application.

To dispose of trademarks that are social assets or are part of a community of assets, the spouse or partner of the trademark owner must intervene in the corresponding license or submitted an affidavit expressing assent.

9.1 Are original supporting documents essential or are copies sufficient? 

The documents presented can be copies certified by a notary public, who certifies that the documents are in conformity with the original.

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

In the case of license contracts and the Power of Attorney must be signed with a notarized signature. If the document is issued abroad, it must be legalized by a Peruvian consular officer.

9.3 Is there a must to use a specific form?

Yes, it is necessary to use the form established by INDECOPI.

If the license is not recorded, it does not have effects on third parties. The record of trademark license has declarative effects.

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

There are no special formalities to grant a partial license of a trademark.

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

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

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

The trademark licensing record has an administrative fee that amounts to approximately USD $ 100.

Trademark: Pledge

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

Yes, it is possible to pledge a trademark. Its record is required.

Portrait ofMaria Delia Oxley
Maria Delia Oxley
Partner
Lima
Portrait ofPedro Llerena
Pedro Llerena
Associate
Lima