CMS Expert Guide to transferring IP rights

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 authorised by the person who is still registered as applicant or owner), sec. 30(3) s. 2 German Patent Act (“Patentgesetz”, “PatG”).

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 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. 

Copies of the supporting documents are sufficient.

In general, the original supporting documents are not essential to record a patent assignment, and copies (where required) are sufficient subject to the following.

For copies of the supporting documents:

1. if Form P19 (which is the specific form required for recording the patent assignment) is signed by or on behalf of the assignor, no supporting documents need to be provided at all; or 
2. if Form P19 is signed by the assignee, copies of the supporting documents evidencing the assignment (for example, assignment agreement) are required.

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.

Notarization or legalization is not required for recording the patent assignment.

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required.

NA

Yes. A specific Form P19 is required to request for recordal at the Hong Kong Patent Registry.

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).

The record in the Patents Registry has a declarative effect in that failure to do so will not render the assignment invalid as between the assignor and assignee, but it will affect rights of the licensee vis-à-vis third parties under certain circumstances.

In particular, according to sections52(1)-(3) PO, any person who claims to have acquired the property in a patent or application for a patent by virtue of a later assignment shall be entitled as against any other person whose application of an earlier unregistered assignment. 

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.

No specific formalities are required if the assigned patent is held by more than one proprietor, other than that:

1. for the assignment agreement, all proprietors shall be the assignors and parties to the assignment agreement; and 
2. for recording the assignment with the Patent Registry, the Form P19 needs to be signed by all proprietors or an agent who is authorised to act for all the proprietors.

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 authorised 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.

There is no requirement to appoint a domestic professional representative, but there is a requirement for the patent owner to have a Hong Kong address for service of documents.

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

HK$325 for filing Form P19. 

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 licence can already be applied for when the patent application is still pending but the licence 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.

The use of a registered patent, or a patent that is subject of an application for registration, can be licensed, or sub-licensed (see sections 50(4) and 52(3) PO)

A licence may also be exclusive or non-exclusive.

None of the above forms of licence requires recordal to become effective.

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.

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 licence agreement.

In general, under no circumstances the original supporting documents are essential. As for copies of the supporting documents:

1. if Form P19 (which is the specific form required for recording the patent assignment)  is signed by or on behalf of the Licensor, no supporting documents need to be provided at all; or 
2. if Form P19 is signed by the Licensee, copies of the supporting documents evidencing the licence (for example, licence agreement) are required.   

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.

Notarization or legalization is not required for recording the patent assignment.  

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required. 

See above.

Yes. A specific Form P19 is required to request for recordal at the Hong Kong Patent Registry.

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). 

The record in the trademark register has a declarative effect in that failure to do so will not render the licence invalid but it will affect rights of the licensee vis-a-via third parties under certain circumstances. In particular according to sections 52(1)-(3) PO, any licensee who claims to have acquired the property in a patent or application for a patent by virtue of a later license shall be entitled as against the licensee of his former unregistered  license. 

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 authorised 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.

There is no requirement to appoint a domestic professional representative, but you need to have an address in Hong Kong, China for service of documents.

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

HK$325 for filing Form P19.

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.

It is possible in the sense of taking security over a patent. Generally, security can take the form of a charge or a mortgage. Yes, security interests should be registered with the patent register.

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.

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. 

Copies of the supporting documents are sufficient.

In general, the original supporting documents are not essential to record a trademark assignment, and copies (where required) are sufficient subject to the following.

For copies of the supporting documents:

1. if the application is signed by or on behalf of the assignor, it does not need to be accompanied by any documentary evidence of the transaction (rule 62(2) TMR). So, copies are not required either;
2. if the application to register particulars is not signed by or on behalf of the assignor, it must be accompanied by documentary evidence of the transaction, for example, a copy of the assignment (rule 62(2) TMR). The document will be open to public inspection rule (rule 69(1)(r) TMR). Where a copy of the assignment is not filed, other documentary evidence will be accepted if it is sufficient to establish the assignment (rule 62(2) TMR). Hence, copies are sufficient under such circumstances.

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.

There is no legalization or notarization requirement for registering a trademark assignment with the Trade Marks Registry.

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required.

NA

Yes. A specific Form T10 is required to request for recordal at the Hong Kong Trade Marks Registry.

The following particulars will be required for filling out the Form T10:

1. the assignee’s name and address (rule 63(1)(a)(i) and 63(1)(b)(i) of Trade Mark Rules Cap 559A (“TMR”));
2. if the assignee is a corporation, the place under the law of which the corporation was formed and registered, incorporated or established (rule 63(1)(a)(ia) and (b)(ia) TMR);
3. the date of the assignment (rule 63(1)(a)(ii) and (b)(ii) TMR);
4. in an assignment of any right, description of the right assigned (rule 63(1)(b)(iii) TMR);
5. the date on which the entry in the register is made (rule 63(2) TMR); and
6. the date of application of registration of particulars or giving of notice.

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. 

The record in the trademark register has a declarative effect in that failure to do so will not render the assignment invalid as between the assignor and assignee, but it will affect rights of the licensee vis-à-vis third parties under certain circumstances. In particular, according to s.29(3) TMO:

1. the transaction is ineffective as against a person acquiring a conflicting interest in the relevant TM right(s) without knowledge of the transaction; and/or
2. the person who becomes the owner of a trademark by virtue of the transaction (i.e. the assignee) will not be entitled to damages or an account of profits for any infringement of the trademark occurring after the date of the transaction.

All parties must agree on the assignment of the trademark.

No specific formalities are required if the licensed trademark is held by more than one proprietor, other than that:

1. for the assignment agreement, all co-owners should be the assignors and parties to the assignment agreement; and
2. for recording the assignment, the Form T10 needs to be signed by all co-owners, or an agent who is authorised to act for the co-owners.

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. 

No specific formalities are required for partially assigning a trademark. 

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.

There is no requirement to appoint a domestic professional representative but there is a requirement for the trademark owner to have a Hong Kong address for service of documents.

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.

HK$800 for registering a trademark assignment.

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.

A licence to use a registered trade mark may be general (i.e. the licence covers all of the goods or services of the registration) or limited (i.e. the licence covers some but not all of the goods or services of the registration). (section 31(1) TMO).

A licence may also be granted as an exclusive licence or a non-exclusive licence.  The grantor of an exclusive licence cannot grant a licence to any other person (except in respect of other goods or services, or in respect of use in another location) nor can he use the mark himself.  

None of the above types of licences require recordal to become effective between the licensor and licensee.  In respect of the effect of the recordal of a trademark licence, please see our answers in question 10 below. 

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.

Copies of supporting documents are sufficient.

Under no circumstances that the original supporting documents are essential. As for copies of the supporting documents:

1. if the application, or notice, is signed by or for the grantor of the licence. it is not necessary to produce the licence when applying to register particulars (of a licence of a registered mark) or when giving notice to register particulars (of a licence of a mark that is the subject of an application for registration) (rule 62(3) TMR).  Hence, copies are not required either;
2. if the application or notice is not signed by or for the grantor, documentary evidence to establish the licence, for example a copy of the licence, has to be filed and will be open to public inspection (rules 62(3) and 69(1)(r) TMR).  Under such circumstances, copies of the licence agreement are required to be submitted. 

There are no legalization and/or translation requirements.

There is no legalization or notarization requirement for registering a trademark licence with the Trade Marks Registry.

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required. 

See above.

Yes.  A specific Form T11 is required to request for recordal at the Hong Kong Trade Marks Registry.

A licence must be in writing (section 33(3) TMO).

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

The record in the trademark register has a declarative effect in that failure to do so will not render the licence invalid but it will affect rights of the licensee vis-a-via third parties under certain circumstances. In particular:

1. unless particulars of a licence are filed for registration, the licence is ineffective as against a person acquiring a conflicting interest without knowledge of it (sections 29(3)(a) and 31(3) TMO);
2. additionally, unless particulars of the licence are filed for registration, the licensee does not have the rights of a licensee under the Ordinance, including rights in relation to infringement (sections 29(3)(b) and 31(3) TMO);
3. unless particulars of the licence are filed before the end of the period of 6 months beginning on its date, the licensee will not be entitled to damages or an account of profits for infringements for the period before particulars of the licence are registered (sections 29(4)(a) and 31(3) TMO).

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.

No. For a recording a partially licensed registered trademark, Form T11 provides options for you to fill out details of specific goods/services for which the granted licence is covered.  

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.

There is no requirement to appoint a domestic professional representative but there is a requirement for the licensee/sub-licensee to have a Hong Kong address for service of documents.

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

HK$800 for each application or notice to register a trademark licence. 

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.

It is possible in the sense of taking security over a trademark. Generally, security can take the form of a charge or a mortgage. Yes, security interests should be registered with the trademark register.