Transfer of IP rights in the United Kingdom (and EPO where applicable)

  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 patent can be transferred by legal transaction, court order, will or succession.

There is no requirement to record an assignment at the UK Intellectual Property Office (IPO) in order for it to become effective. It is nevertheless advisable to do so.

Assignment of a European patent application must be registered at the European Patent Office (EPO).

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

2.1 Are original supporting documents essential or are copies sufficient?

Assignments must be in writing.

If signed by, or on behalf of, the assignor, no documentary evidence to establish the assignment needs to be submitted.

Alternatively, the assignee can submit documentary evidence to establish the assignment, for which submission of a copy is sufficient.

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

There are no legalisation or notarisation requirements. For registration, documents not in English must be translated.

Registering an assignment must be done on Patents Form 21. An assignment of a European patent application must be signed by, or on behalf of, both the assignor and the assignee.

2.3 Is there a must to use a specific form?

Form 5050 can be used to register an assignment, although it is not required to use this specific form. Failing to register an assignment within 6 months impacts the ability to claim costs and expenses during patent litigation. Later assignments may have effect over earlier assignments if the earlier assignment is not registered.

The record in the patent register has a declarative effect.

Assignments require the consent of all proprietors.

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

There is no need to appoint a domestic professional representative.

A domestic professional representative is required for European patent applications, where the applicant is neither a resident nor has a principal place of business in an EPO contracting state.

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

There is no need to appoint a domestic professional representative.

A domestic professional representative is required for European patent applications, where the applicant is neither a resident nor has a principal place of business in an EPO contracting state.

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

Form 21 incurs a fee of £50 (as of March 2021).

Patents: Licensing

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

Patent licences may be exclusive, sole or non-exclusive. In certain situations, there may also be compulsory licences. 

There is no requirement to record a licence at the UK Intellectual Property Office (IPO) in order for it to become effective. It is nevertheless advisable to do so.

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

8.1 Are original supporting documents essential or are copies sufficient?

There is no requirement for a licence to be in writing.

If signed by the licensor, no documentary evidence to establish the licence needs to be submitted.

Alternatively, the licensee can submit documentary evidence to establish the licence, for which submission of a copy is sufficient.

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

There are no legalisation or notarisation requirements.

For registration, documents not in English must be translated.

8.3 Is there a must to use a specific form?

Registering an assignment must be done on Patents Form 21.

Licences of a European patent application must be signed by both the licensor and the licensee.

Form 5050 can be used to register a licence, although it is not required to use this specific form.

Failing to register a licence within 6 months impacts the ability to claim costs and expenses during patent litigation.

Later licences may have effect over earlier (exclusive) licences if the earlier licence is not registered.

The record in the patent register has a declarative effect.

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

There is no need to appoint a domestic professional representative.

A domestic professional representative is required for European patent applications, where the applicant is neither a resident nor has a principal place of business in an EPO contracting state.

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

Form 21 incurs a fee of £50 (as of March 2021).

Patents: Pledge

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

It is possible to pledge a patent. There is no requirement to record a pledge on the patent register, although it is possible to do so. Nevertheless, it must be recorded with Companies House.

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? 

NA

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

NA

NA

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

NA

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

NA

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

NA

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

NA

Trademark: Licensing

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

NA

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

NA

NA

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

NA

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

NA

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

NA

Trademark: Pledge

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

NA

Portrait of Jane Hollywood
Jane Hollywood
Partner
London
Portrait of Alex Epstein
Alex Epstein
Trainee Patent Attorney
London