To register or not to register, that is the question

It is important to register any changes that affect the life of a patent or patent application with the relevant patent office(s). However, the requirements for updating a title – or consequences of not doing so – can differ dramatically, depending on the type of change and country, as Rose-Marie Ehanno and Paul Rolland explain.

In our recent webinar examining patent recordals best practices, we discussed the regulations, processes and occasional headaches involved in managing title updates for global patent rights. Here, we summarise the guidance and tools discussed.

What’s a recordal?

The term ‘recordal’ covers all the procedures necessary to legally register changes affecting a patent. Such updates become necessary due to various events that may occur in the lifetime of a patent, whether affecting the owner or relevant third parties. The recordal serves to notify third parties and patent offices about the changes. It is a mandatory procedure for legal opposability.  

Recordals become necessary as a result of different events, but in particular: 

• A change of ownership (total or partial);
• A change of name or address of the owner; and
• The conclusion of a licensing agreement or a pledge.

Why’s it important?

As with any IP registration, the risk here is related to the validity of the registered patent right. In concrete terms, the grant of a patent provides the legal right to fully enjoy one's rights, including the right to claim compensation from an infringer. If a patent right or patent application has been transferred from one owner to another, but that new owner (or applicant) has not registered the update, this right to compensation cannot be claimed. The absence of recordal does not invalidate the transfer of the patent itself, but it prevents some of the benefits of that transfer.

Whether related to a change of name or ownership, valuable benefits can be lost therefore, if the recordal is not properly registered at patent offices.The same applies to other right holders, such as license holders or creditors in the context of a pledge, who must also register their status in order to have their rights recognised.

What’s the challenge?

The recordals process is highly administrative and this can result in a number of difficulties for patent owners; in particular, if the changes need to be recorded at numerous patent offices worldwide, each of which have their own procedures and requirements. Carrying out a recordal for even a single patent family can already be a very cumbersome procedure.

Timing is crucial too. Here, it is advisable to pay particular attention to the timeframes for international (PCT) and European (EPC) procedures, as compliance with certain time limits specific to these procedures can make it possible to record changes in multiple countries via a single, centralised update, thereby saving time and money. (For more on this, please read our article 'More than an address change: Managing patent recordals'.)

In addition, IP offices have different regulations and deadlines for registering different changes An assignment, a merger operation, or a change of address cannot be proved by the same documents. Even more challenging: in many countries, these requirements are not clearly set out at all, given they are more often the result of office practice than of precisely established rules. The use of local agents is therefore often preferable, if not mandatory.

The management of all these procedures, and the many difficulties that can arise in carrying them out, can be overwhelming for a company. Errors are easily made but once recorded can be even more complex and costly to correct than the first entry. For that reason, it is more economical and secure to outsource the process to a specialist such as Novagraaf.

For further information on the patent recordal process, including the common triggers, pitfalls and national or regional subtleties, please watch our dedicated webinar. To find out more about Novagraaf’s dedicated patent recordals service, download our service overview or contact us below.

Rose-Marie Ehanno and Paul Rolland are Legal Consultants at Novagraaf in France.