Transfer of IP rights in Serbia

  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 licence?
  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 patent may be assigned by an agreement on the transfer of rights, a status change of the rights holder or applicant, inheritance, a court or administrative decision.

Registration is not required for the assignment to be effective between the parties, but the transfer must be recorded in the appropriate register to have a legal effect on third parties. 

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

The transfer of rights is entered in the appropriate register at the written request of the rights holder, applicant or the acquirer of the rights. The signed written request must include the registration or application number, information on the rights holder or applicant, acquirer of the rights and their representatives (if represented), and a statement requesting the transfer and indicating the right to be transferred. 

The following supporting documents must be submitted with the request:

  1. document evidencing the transfer of the rights (agreement, excerpt from the agreement, statement on transfer signed by both parties, document issued by the competent authority confirming the merger of foreign entities, decision of the court or other document evidencing the transfer);
  2. power of attorney (if represented);
  3. proof the administrative fees have been paid.
2.1 Are original supporting documents essential or are copies sufficient?

Originals or notarized copies are required. 

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

Documents may have to be legalized, depending on the country in which the document was issued. Agreement on transfer does not have to be notarized. Copies of the documents must be notarized. Translation into Serbian by an official translator is mandatory.

2.3 Is there a must to use a specific form?

There is a specific application form that must be used for the registration.

If the patent assignment is not recorded in the appropriate register, it will have an effect only inter partes and not on third parties. 

The recording of the patent assignment in the patent register has a declarative effect.

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

No.

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

Yes, for foreign entities. 

In proceedings before the Serbian Intellectual Property Office to register the patent transfer, a foreign natural or legal person who does not have a seat or residence in the Republic of Serbia must be represented by a representative listed in the Register of Representatives kept by the Serbian Intellectual Property Office or by a Serbian attorney

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

The administrative fee for the decision on the transfer of rights is in the amount of RSD 4,780 (app EUR 40).

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 licences and non-exclusive licences, as well as compulsory licences, which can be only non-exclusive. 

In any case, registration is not required for the licence agreement to be effective between the parties, but the licence must be recorded in the appropriate register to have a legal effect on third parties.

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

The licence is entered in the appropriate register at the written request of the licensor or the licensee. The signed written request must include the registration or application number, information on the rights holder or applicant, licensee and their representatives (if represented), and a statement on the type of the licence (exclusive or non-exclusive) and the duration of the licence. 

The following supporting documents must be submitted with the request:

  1. licence agreement or an excerpt from the licence agreement evidencing the transfer;
  2. power of attorney (if represented);
  3. proof the administrative fees have been paid.
8.1 Are original supporting documents essential or are copies sufficient?

Originals or notarized copies are required. 

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

A licence agreement does not have to be notarized. Copies of the documents must be notarized. Notarized copies may have to be legalized, depending on the country in which the document was notarized. Translation into Serbian by an official translator is mandatory.

8.3 Is there a must to use a specific form?

There is a specific application form that must be used for registration.

If the licence is not recorded in the appropriate register, it will have an effect only inter partes and not on third parties. 

Recording of the patent licence in the patent register has a declarative effect.

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

Yes, for foreign entities. 

In proceedings before the Serbian Intellectual Property Office for the registration of the patent licence, a foreign natural or legal person who does not have a seat or residence in the Republic of Serbia must be represented by a representative listed in the Register of Representatives kept by the Serbian Intellectual Property Office or by a Serbian attorney.

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

The administrative fee for the decision to transfer a licence is in the amount of RSD 4,780 (app EUR 40).

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. 

The registration of the pledge in the appropriate register is required for the creditor to acquire the right of pledge

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 may be assigned by an agreement on the transfer of rights, a status change of the rights holder or applicant, or a court or administrative decision.

Registration is not required for the assignment to be effective between the parties, but the transfer must be recorded in the appropriate register to produce legal effect towards third parties. 

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

The transfer of rights is entered in the appropriate register at the written request of the right holder, applicant or the acquirer of the right. A signed written request must include the registration or application number, information on the rights holder or applicant, acquirer of the rights and their representatives (if represented), and classes relevant for the transfer. 

The following supporting documents must be submitted with the request:

  1. document evidencing the transfer of the rights (agreement, excerpt from the agreement, statement on transfer signed by both parties, document issued by the competent authority confirming the merger, decision of the court or other document evidencing the transfer);
  2. power of attorney (if represented);
  3. proof the administrative fees have been paid;
  4. list of goods and services in case the trademark is assigned only for certain goods or services.
2.1 Are original supporting documents essential or are copies sufficient? 

Originals or notarized copies are required. 

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

Documents may have to be legalized, depending on the country in which the document was issued. The Agreement on transfer does not have to be notarized. Copies of the documents must be notarized. Translation into Serbian by the official translator is mandatory.

2.3 Is there a must to use a specific form?

There is a specific application form that must be used for the registration.

If the trademark assignment is not recorded in the appropriate register, it will only have an effect inter partes and not on third parties. 

The recording of the trademark assignment in the trademark register has a declarative effect.

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

No.

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

If the trademark is only assigned for some goods or services, the request for registration must include the information on the classes of the International Classification of Goods and Services to which the request refers. 

If the trademark is assigned only for certain types of goods – i.e. services from a certain class, or from several classes of the International Classification of Goods and Services – the list of goods, i.e. services to which the request refers, must be enclosed with the request.

The registration of the trademark assignment shall not be approved if such transfer could create confusion in trade regarding the type, quality or geographical origin of goods or services for which the trademark is registered, or for which the trademark application has been filed, unless the assignee waives protection for those goods or services for which there may be confusion.

Also, the registration of a trademark assignment that only refers to some goods or services will not be approved if the goods or services assigned are substantially similar to the remaining goods or services covered by the trademark or application for trademark recognition of the assignor.

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

Yes, for foreign entities. 

In proceedings before the Serbian Intellectual Property Office for the registration of the trademark assignment, a foreign natural or legal person who does not have a seat or residence in the Republic of Serbia must be represented by a representative listed in the Register of Representatives kept by the Serbian Intellectual Property Office or by a Serbian attorney.

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

The administrative fee for the decision on assignment is in the amount of RSD 4,780 (app EUR 40) for one trademark. If more than one trademark is assigned by the same application the administrative fee is RSD 3,190 (app EUR 27) per trademark.

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, there are exclusive licences and non-exclusive licences, which may cover all or only part of the goods and/or services for which the trademark is registered. 

In any case, registration is not necessary for the licence agreement to be effective between the parties, but it must be recorded in the appropriate register to have a legal effect on third parties.

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

The licence is entered in the appropriate register at the written request of the licensor or the licensee. The signed written request must include the registration or application number, information on the rights holder or applicant, licensee and their representatives (if represented), and classes covered by the licence, and a statement on the licence type (exclusive or non-exclusive) and the duration of the licence. 

The following supporting documents must be submitted with the request:

  1. the licence agreement or the excerpt from the licence agreement, or the signed statement of the parties evidencing the transfer;
  2. power of attorney (if represented);
  3. proof the administrative fees have been paid;
  4. list of goods and services if the trademark is assigned only for certain goods or services.
9.1 Are original supporting documents essential or are copies sufficient? 

Originals or notarized copies are required. 

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

The licence agreement does not have to be notarized. Copies of the documents must be notarized. Notarized copies may have to be legalized, depending on the country in which the document was notarized. Translation into Serbian by an official translator is mandatory.

9.3 Is there a must to use a specific form?

There is a specific application form that must be used for registration.

If the licence is not recorded in the appropriate register, it will have an effect only inter partes and not towards third parties. 

The recording of the trademark licence in the trademark register has a declarative effect.

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

The licence agreement must specify the goods and services for which the trademark is licensed. 

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

Yes, for foreign entities. 

In proceedings before the Serbian Intellectual Property Office to register the trademark licence, a foreign natural or legal person who does not have a seat or residence in the Republic of Serbia must be represented by a representative listed in the Register of Representatives kept by the Serbian Intellectual Property Office or by a Serbian attorney.

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

The administrative fee for the decision on recording the licence is in the amount of RSD 4,780 (app EUR 40) for one trademark. If more than one trademark is licensed by the same application the administrative fee is RSD 3,190 (app EUR 27) per trademark.

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. 

Registering the pledge in the appropriate register is required for the creditor to acquire the right of pledge.

Portrait of Maja Stepanović
Maja Stepanović
Partner
Belgrade