Is your IP in the right name?

When you first file an application to register some Intellectual Property (IP), say with a patent or trademark application, or an application to register a design, your Attorney will have checked with you the name or names the application is to be in: sometimes the inventor/designer themselves, often her or his employee, perhaps a third party the rights are assigned to, or who the work has been commissioned by.

It can take a while, perhaps even several years for a patent or other type of IP protection to be granted. In that time the applicant entity may well change. They may change their name. They may have assigned (sold) the IP, or indeed the company of part of it, to someone else. An individual owner may even have sadly passed away, and the rights left to a beneficiary.

It is very important to make sure that your Attorney is kept up to date with this, so that they can take appropriate steps to make sure the official registers bearing your IP are kept up to date. Rights to damages or other reparation can be lost if the register is not in the correct name. Under UK law for example a transfer should be recorded within six months or there is a risk that full rights may not be maintained.

For a European Patent application a transfer can be simply and economically dealt with, at the European Patent Office, provided the application is not yet granted. After grant however it becomes a parallel bundle of separate national rights in individual countries, and transfers may have to be registered in each separate country, often with different requirements and types of documents required in each territory. This can increase costs, complication and time taken by busy business people. Sometimes clients forget to do this whilst the application is pending and then have to incur extra expense and trouble attending to it after grant.

Thus, as soon as you change a name, sell a business or asset, or have any other reason to think the registered name of your IP should be updated, do consult your Attorney. The earlier… the better… the cheaper.

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