Recording a Transfer of Ownership: Patents and Designs

Introduction:

Transferring the ownership of intellectual property (‘IP’), including patent applications, granted patents and designs, is a critical process to ensure that the correct parties are listed as the holders of these rights. To enable this, it is essential to understanding the steps, fees, and forms involved in the process of recording a transfer of ownership.

Recording a Transfer:

An assignor may transfer patent application(s) or granted patent(s) to an assignee via their own agreement such as an assignment or license – this is separate from recording the transfer with the Patent Office.

The UK Intellectual Property Office (‘UKIPO’) requires that the transfer of ownership be recorded within 6 months from the date of the transfer of ownership. It is strongly advised to file the transfer as soon as possible, as this will notify third parties about the ownership change, facilitate the recovery of costs in infringement proceedings, and potentially save time and costs.

It is clearly beneficial – for an assignee in particular – to ensure that the transaction is recorded. If an assignee does not register the transfer within 6 months from the date of the transfer of ownership, then there may be a risk of not being able to claim costs or expenses in infringement proceedings.

Any change of ownership must occur before filing the application to record the change at the Patent Office.

Hence, recordal of a transfer at the Patent Office has a declarative effect, meaning it acknowledges the transfer but does not create or alter ownership rights. The underlying ownership rights are governed by the assignment agreement, which takes effect prior to the recordal of the transfer, and on which the recordal of transfer is based.

After filing the application to record the change of ownership of a patent application or patent at the UKIPO, the recordal is typically registered, with confirmation issued within 10 days to 2 weeks.

The UKIPO will publish the change in the Patents Journal, and it will be open for objections for around 4 weeks. If no objections arise, the change is approved, and the UKIPO will confirm the recordal.

For European Patents, a European patent application or patent may be transferred as a whole or in part for one or more of the designated contracting states, and the transfer registered at the European Patent Office (‘EPO’).

Fees for Recording a Change of Ownership:

For UK Patent Applications and Patents:

To record the change of ownership of UK patents or patent applications, Form PF21 is required. The official fee for this application is £50 per application to record a change of ownership, which can cover multiple patents or patent applications as long as they relate to the same assignor and assignee [1]. The transfer may be supported by multiple assignments, or a part of an assignment.

A schedule template can be used to list, where required, multiple patent applications or patents, including the application number or publication number, and indicating whether it is a GB patent or an EP(GB) patent on Form PF21.

For UK Registered Designs:

The process for transferring ownership of registered designs is slightly different. To update the register of designs, you would typically use Form DF16A, but there is no official fee for transferring ownership [2].

You can also use Form DF1A if you need to appoint or change an agent to handle your registered designs [2].

For European Patent Applications and Patents:

For the European patent applications, transfers must be filed in writing with the EPO, quoting the application number(s) concerned. It is possible to use EPO Form 5050, although it is not mandatory to use this specific form [3].

The request must be signed by an entitled person, i.e. the assignor, assignee, or their representative. The EPO should also be notified if the transfer of the patent application or patent affects the authorisation of the representative. Additionally, any kind of written evidence, such as a copy of the assignment or a declaration signed by both parties, is admissible.

For granted European patents, the transfer of ownership can be registered at the EPO until the end of the 9-month opposition period. After this period, the transfer must be recorded at the national offices where the European patent is in force (e.g., UKIPO for EP(GB) patents) [4].

The registration of the transfer at the EPO (currently) costs EUR 120 per patent or patent application, charged individually for each, even if they are part of the same assignment.

When filing an application to record the change of ownership of a patent application or patent at the EPO, it is possible to select specific country designations.

This allows you to transfer ownership for just the countries in which the European patent is validated, where you wish the transfer to apply, which may be relevant when dealing with European patent(s) validated in multiple countries.

The transfer becomes effective before the EPO on the date on which the above-mentioned requirements are met. The newly registered applicant or proprietor is only entitled to exercise the right to the European patent application or patent before the EPO from this date.

For international patent applications i.e., during the international phase for a PCT application, the recordal of transfers must be requested with the International Bureau of the World Intellectual Property Organization (‘WIPO’).

For unpublished applications, registration of the transfer of a European patent application can be requested at any time. The transfer will not, however, be entered in the European Patent Register before the publication of the European patent application.

Documents Required for the Transfer:

An application to record the change of ownership of a patent application or patent at the UKIPO or give notice of rights acquired in a patent may be recorded via filing details of the patent or patent application including:

• details of the owner(s) currently on the register;
• details of the new owner(s);
• details of the transaction (i.e., assignment, licence etc.);
• date of the transfer of ownership i.e., date on the assignment document – (please provide the date of transfer of ownership); and

For the new owner, the agent details or address for service in the UK is also required. The application to record the change of ownership is typically signed by the assignor or their authorised representative. The UKIPO will not normally require additional evidence but may request it in some cases.

Typically, neither a copy of the assignment nor a Power of Attorney is required at the initial stage, unless otherwise advised by the UKIPO. The UKIPO only requires UK patent attorneys to file a Power of Attorney in limited circumstances. In this instance, it is unlikely to be necessary.

Transferring the ownership of intellectual property (‘IP’), including patent applications, granted patents and designs, is a critical process to ensure that the correct parties are listed as the holders of these rights.

If in the case of an assignment that is not signed by or on behalf of the party assigning the rights, then documentary evidence sufficient to establish the transaction should accompany the application to record the change of ownership filed at the UKIPO.

For an application to record the change of ownership of a patent or patent application at the EPO, the same above-mentioned conditions are required. In addition, evidence must be provided. any kind of suitable written evidence is admissible, for example, a copy of the assignment, or a copy of or extract from an official document, or a declaration signed by both parties.

The application to record the change of ownership is typically signed by the assignor (or the assignor’s representative); but it can also be signed by an entitled person i.e., the old owner, the new owner, or the recorded agent of the old or new owner.

Multiple Patent Applications or Granted Patents:

At the UKIPO, multiple patent applications or patents can be included in a single application to record the change of ownership, as long as they are transferred from the same assignor to the same assignee. The fee is £50 per application to record a change in ownership – which may include multiple patent applications or patents – and a schedule template can be used to list the patents or applications [1].

At the EPO, multiple patent applications or patents can also be included; however, the fee of EUR 120 applies per patent application or patent.

Appointing a New Agent or Representative:

When transferring ownership, you may need to appoint a new representative to handle any future correspondence related to the patents or designs.

For UK Patent Applications or Patents, you can use Form PF51 to register the new address for service for the new agent [5]; and for UK Registered Designs, you can use Form DF1A to appoint or change the agent.

At the EPO, professional representatives must inform the EPO of their appointment for the specific application. While a Power of Attorney may not always be required, it could be needed depending on the circumstances of the case.

For example, the newly appointed representative might ask you to sign a Power of attorney and will file a request for change of applicant’s representative at the EPO. If the earliest representation was not yet terminated, your attorney will have to file an authorization.

Conclusion:

Transferring ownership of IP rights, such as patent applications, patents or registered designs is a crucial aspect of managing intellectual property. By adhering to the guidelines above, ensuring proper documentation, and completing all steps within the required timeframes, you can simplify the process and avoid unnecessary delays.

Whether dealing with UK patents, designs, or European patents, staying informed will help you navigate the complexities with ease.

T is for Transfers of ownership, and recording assignments in a timely manner with the Patent Office.

References:

[1] Application to register or give notice of rights – https://www.gov.uk/government/publications/application-to-register-or-give-notice-of-rights

[2] Change of proprietor’s name or address – https://www.gov.uk/government/publications/change-of-proprietors-name-or-address

[3] I would like to register a transfer of rights (change of ownership) for a European patent application or patent. What do I have to do? – https://www.epo.org/en/service-support/faq/applying-patent/your-application/i-would-register-transfer-rights-change

[4] Transfer of the European patent application – https://www.epo.org/en/legal/guidelines-epc/2024/e_xiv_3.html

[5] Appointment or change of agent – https://www.gov.uk/government/publications/appointment-or-change-of-agent

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