Transfer of IP rights in Slovakia

Under the Act No. 435/2001 Coll. on patents (the “Patent Act”), the patent assignment is considered to be a transfer of a patent owner's property rights (the "transferor") to the receiving party (the "transferee").

The patent may be transferred:

1. as part of a single asset transaction; 
2. as part of complex transactions, such as the sale of a company’s business assets or share purchases; or
3. through the operation of law, such as succession or sale of business.

Depending on the type of transaction, a patent could be transferred by means of a:

1. separate patent transfer agreement (in case of asset deals);
2. share purchase agreement (in case of a share deals, within which the ownership of a patent would be transferred with the acquisition of shares in the target company);
3. sale of business agreement; or
4. decision issued by court.   

The patent transfer must be registered with the register maintained by the Slovak Industrial Property Office (the "IPO") using the following documents:

1. application for the registration of a patent transfer; and
2. supporting documents. 

The supporting documents are:

1. patent transfer agreement (in written form) or other document proving transfer of a patent; and
2. other documents (e.g. power of attorney if used, extract from the commercial register with respect to foreign entities, etc.).

2.1 Are original supporting documents essential or are copies sufficient?

Patent transfer agreement (or other document proving transfer of a patent) must be provided in the original or in a notarized copy. Other supporting documents may be provided as copies. However, if the IPO has doubts about the authenticity of the submitted copies, it may request the submission of the original document or a notarized copy. 

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

Except as provided above in point 2.1, there are no other legalization or notarization requirements. Application and supporting documents must be provided in the Slovak language or a certified translation. 

2.3 Is there a must to use a specific form?

The application for the registration of a patent transfer could be submitted in a recommended form provided on the IPO webpage (please see https://www.indprop.gov.sk/swift_data/source/dokumenty_na_stiahnutie/formulare/pdf/t_patentprevod.pdf). The form provided on the IPO webpage is not mandatory, however the application must include all requirements according to the Decree No. 223/2002 Coll. Implementing the Patent Act. We recommend using the form provided by IPO for its clarity and legal sophistication. 

Registration of patent transfer with the IPO has a declaratory effect. 

The patent transfer agreement is effective between the parties on the day of its conclusion, or on the date specified in the transfer agreement. The patent transfer becomes effective vis-à-vis third parties on registering the transfer with the IPO. 

The Patent Act does not set any time limit for filing an application for registration of a transfer, but its timely filing is in the interest of the contracting parties, especially the transferee. Upon the patent transfer registration, the transferee may perform legal acts with respect to the IPO, which are reserved for the owner. It is also important to register the transfer to reconcile the actual and registered legal status of the patent.

If a patent transfer agreement is not registered and another third party purchases the patent without knowing about the previous transfer, the purchaser will not become the owner of the patent. The registration therefore acts as a public notice for any potential future transfers. 

We recommend transferees register any patent transfer as soon as possible as a matter of good business practice and to protect themselves in relation to the granting of further transfers by the original owner, or other conflicting interests.

The patent may be subject to shared co-ownership. The IPO must register the shared co-ownership upon the submission of the written agreement between all owners of the patent. 

In case a co-owned patent is transferred, the restriction resulting from the pre-emption right of the co-owners must be taken into account. If a patent co-owner wishes to transfer their share of the patent to a third party, they must first offer their share to the other co-owners.

If a co-owner dies, ceases to exist without a legal successor or relinquishes its co-ownership share, their share will be transferred to the patent’s other co-owners in proportion to their current share.
If a co-owner does not agree to the transfer of shares proposed by the remaining co-owners, the court will decide on their proposal.

In general, it is not necessary to appoint a domestic attorney or professional representative for IPO proceedings. Citizens of EEA and entities with their registered seat in the EEA are obliged to notify IPO of the address for delivery in the territory of the Slovak Republic.

Persons who are not citizens of the EEA and entities with a registered seat outside the EEA must appoint a domestic attorney or professional representative for IPO proceedings.

The fee in the amount of EUR 30 arises per application for registering the patent transfer to another owner with the IPO.

The Patent Act distinguishes between exclusive and non-exclusive licences. Both types of licences must be registered with the IPO.

The licence is effective upon its conclusion between the parties or on another date as determined by the contracting parties. The licence becomes effective vis-à-vis third parties by registering the license with the IPO.

The patent licence must be registered with the IPO based on the following documents:

1. application for the registration of a patent licence; and
2. supporting documents. 

The supporting documents are:

1. patent licence agreement (in written form) or another document proving a patent license; and
2. other documents (e.g. power of attorney if used, extract from the commercial register with respect to foreign entities, etc.).

8.1 Are original supporting documents essential or are copies sufficient?

A patent licence agreement (or other documents proving the licence of a patent) must be provided in the original or as a notarized copy. Copies of other supporting documents may be provided. However, if the IPO has doubts about the authenticity of the submitted copies, it may request the submission of the original document or a notarized copy of it. 

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

Except as provided above in point 8.1, there are no other legalization or notarization requirements. Application and supporting documents must be provided in the Slovak language or in a certified copy. 

8.3 Is there a must to use a specific form?

The application for the registration of a patent licence could be submitted in a recommended form provided on the IPO webpage (please see https://www.indprop.gov.sk/swift_data/source/dokumenty_na_stiahnutie/formulare/pdf/t_patentlicencia.pdf). The form provided on the IPO webpage is not mandatory, however the application must include all requirements according to the Decree No. 223/2002 Coll. Implementing the Patent Act. We recommend using the form provided by the IPO for its clarity and legal sophistication. 

Registration of the patent licence with the IPO has a declaratory effect. 

The patent licence becomes effective between the parties on the day of its conclusion, or on the date specified in the licence agreement. The patent licence becomes effective vis-à-vis third parties by registering the licence with the IPO. 

The Patent Act does not set any time limit for filing an application for registration of a licence, but its timely filing is in the interest of the contracting parties, especially the licensee. It is also important to register the licence to reconcile the actual and registered legal status of the licensed patent. The registration acts as a public notice of the licensee’s rights. 

We recommend licensees register any patent licenses as soon as possible as a matter of good business practice and to protect themselves in relation to the granting of further licences or the sale of the patent by the owner, or other conflicting interests.

IThe same applies here as in point 5 above.

There is a fee in the amount of EUR 20 per application for registering the patent licence with the IPO.

Yes, patents can be pledged. 

Pledges must be registered with the IPO. The entry has constitutive effect.

Under the Act No. 506/2009 Coll. on trademarks (the “Trademark Act”), the trademark assignment is considered a transfer of the trademark owner's property rights (the "transferor") to the receiving party (the "transferee").

The trademark may be transferred:

1. as part of a single asset transaction;
2. as part of complex transactions, such as the sales of a company’s business assets or share purchases; or
3. through the operation of the law as in a succession or sale of business.

Depending on the type of transaction, a trademark could be transferred by means of a:

1. separate trademark transfer agreement (in case of asset deals);
2. share purchase agreement (in case of a share deals, within which the ownership of a trademark would be transferred with the acquisition of shares in the target company);
3. sale of a business agreement; or
4. decision issued by relevant authority.

The trademark transfer must be registered with the IPO based on the following documents:

1. application for the registration of a trademark transfer; and
2. supporting documents. 

The supporting documents are:

1. trademark transfer agreement (in written form) or other document proving the transfer of a trademark;
2. a list of goods or services in case of a partial transfer (such a list must be included in the trademark transfer agreement); and
3. other documents (e.g. power of attorney if used, extract from the commercial register with respect to foreign entities, etc.).

2.1 Are original supporting documents essential or are copies sufficient? 

Trademark transfer agreement (or other documents proving transfer of a trademark) must be provided in the original or a notarized copy. Other supporting documents may be provided as copies. However, if the IPO has doubts about the authenticity of the submitted copies, it may request the submission of the original document or a notarized copy of it. 

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

Except as provided above in point 2.1, there are no other legalization or notarization requirements. Trademark application and supporting documents must be provided in the Slovak language or in a certified translation. 

2.3 Is there a must to use a specific form?

The application for the registration of a trademark transfer could be submitted in a recommended form provided on the IPO webpage (please see https://www.indprop.gov.sk/swift_data/source/dokumenty_na_stiahnutie/formulare/pdf/t_znamkaprevod.pdf). The form provided on the IPO webpage is not mandatory, however the application must include all requirements according to the Decree No. 567/2009 Implementing the Trademark Act. We recommend using the form provided by the IPO for its clarity and legal sophistication. 

The registration of a trademark transfer with the IPO has a declaratory effect. 

A trademark transfer agreement is effective between the parties on the day of its conclusion, or on the date specified in the transfer agreement. The trademark transfer becomes effective vis-à-vis third parties on registering the transfer with the IPO. 

The Trademark Act does not set any time limit for filing an application for registration of a transfer, but its timely filing is in the interest of the contracting parties, especially the transferee. Upon registering the trademark transfer, the transferee may perform actions against the IPO, which are reserved for the owner. It is also important to register the transfer to reconcile the actual and registered legal status of the trademark.

If a trademark transfer agreement is not registered and another third party purchases the trademark without knowing about a previous transfer, the purchaser will not become an owner of trademark. The registration therefore acts as public notice for any potential future transfers. 

We recommend transferees register any trademark transfer as soon as possible as a matter of good business practice and to protect themselves against the granting of further transfers by the original owner, or other conflicting interests.

A trademark may be subject to shared co-ownership. The IPO will register the shared co-ownership upon the submission of the written agreement between all owners of the trademark. 
  
In case a co-owned trademark is transferred, the restriction resulting from the pre-emption right of the co-owners must be taken into account. If a trademark co-owner wishes to transfer their share on the trademark to a third party, they must first offer their share to the other co-owners.

If a co-owner dies, ceases to exist without a legal successor or relinquishes its co-ownership share, their share will be transferred to the trademark’s other co-owners in proportion to their current share.

If a co-owner does not agree to the transfer of shares to the remaining co-owners, the court will decide on their proposal.

The trademark may be transferred to another person for all or some of the goods or services for which the trademark is registered with the IPO (the “partial transfer”).

A partial transfer must be registered with the IPO based on the application and supporting documents, i.e. the trademark transfer agreement and a specification of goods or services to be transferred in case of a partial transfer (such a list must be included within the trademark transfer agreement). 

The list of specified goods and services must not overlap with the goods or services remaining in the original trademark or with those of any prior divisions. 

A territorial division of the trademark or a division and separate transfer of individual trademark components (e.g. word and figurative components) is not permitted.

In general, it is not necessary to appoint a domestic attorney or professional representative for IPO proceedings. Citizens of EEA and entities with their registered seat in the EEA are obliged to notify IPO of the address for delivery in the territory of the Slovak Republic.

Persons who are not citizens of the EEA and entities with registered seat outside the EEA must appoint a domestic attorney or professional representative for IPO proceedings.  

A fee in the amount of EUR 30 arises per application for registering the trademark transfer with the IPO.

The Trademark Act distinguishes between exclusive and non-exclusive licences. Both types of licences must be registered with the IPO.

The licence is effective between the parties upon its conclusion between the parties or on another date determined by the contracting parties. The licence becomes effective vis-à-vis third parties upon registering the licence with the IPO.

The trademark licence must be registered with the IPO based on following documents:

1. application for the registration of a trademark licence; and
2. supporting documents. 

The supporting documents are:

1. trademark licence agreement (in written form) or another document proving license of a trademark;
2. a list of goods or services in case of a partial license (such a list must be included in the trademark licence agreement);
3. other documents (e.g. power of attorney if used, extract from the commercial register with respect to foreign entities).

9.1 Are original supporting documents essential or are copies sufficient? 

Trademark licence agreement (or other documents proving the licence of a trademark) must be provided in the original or a notarized copy. Other supporting documents may be provided as copies. However, if the IPO has doubts about the authenticity of the submitted copies, it may request the submission of the original document or a notarized copy of it. 

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

Except as provided above in point 9.1, there are no other legalization or notarization requirements. Application and supporting documents must be provided in the Slovak language or in a certified copy. 

9.3 Is there a must to use a specific form?

The application for the registration of a trademark licence can be submitted in a recommended form provided on the IPO webpage (please see https://www.indprop.gov.sk/swift_data/source/dokumenty_na_stiahnutie/formulare/pdf/t_znamkalicencia.pdf). The form provided on the IPO webpage is not mandatory, however the application must include all requirements according to the Decree No. 567/2009 Implementing the Trademark Act. We recommend using the form provided by the IPO for its clarity and legal sophistication. 

Registration of trademark licence with the IPO has a declaratory effect. 

The trademark licence is effective between the parties on the day of its conclusion, or on the date specified in the license agreement. The trademark license becomes effective vis-à-vis third parties on registering the license with the IPO. 

The Trademark Act does not set any time limit for filing an application for registration of a license, but its timely filing is in the interest of the contracting parties, especially the licensee. It is also important to register the license to reconcile the actual and registered legal status of the trademark.

We recommend licensees register any trademark licenses as soon as possible as a matter of good business practice and to protect themselves against the granting of further licences or the sale of the trademark by the owner, or other conflicting interests.

In case of a partial licence, the application for licence registration and the license agreement must include the list of specified goods and services covered by the partial trademark licence. 

Please see answer to point 6 above. Same applies herein. 

A fee in the amount of EUR 20 is payable per application for registering the trademark licence with the IPO.

Yes, trademarks can be pledged. 

Pledges must be registered with the IPO. The entry has constitutive effect.