Recordal of Assignments – Why the chain of ownership for a Patent is important

A patent is only truly valuable if it is enforceable and proving ownership of your patent is a key part to enforceability.

Therefore, if you want to make the most of your patent, you need to ensure that all the correct documents are in place to prove that you own it. This is especially true if the ownership of that patent has been assigned at any stage. The ownership of some patents may be assigned several times during their lifetime.

The process for transferring ownership of a patent is known as an assignment recordal. Showing the chain of ownership is particularly important and all assignment procedures must be adhered to on each occasion and in each country the patent has been granted or recorded in. Securing patent ownership requires proof of an unbroken chain of title from the original inventors to the current owner.

Unfortunately, many patent owners do not view a recordal as a priority or the wise investment that it is. As a result, this is something that often gets overlooked and can cause difficulties when contentious matters, litigation or simply attending to procedural issues that arise at a later date.

E.g. The advent of the Unitary Patent Court means that some patent owners want to opt out of the jurisdiction of the new court. They will only be able to do this if they can prove they are the owners of the patent in question.

How do you carry out an Assignment Recordal?

In order for the ownership of a granted patent to be passed on, an assignment recordal will need to be effectively carried out.

Assignment recordals usually need to:

• Be officially recorded in writing (some countries require legalisation or notarization) – This will help with enforcement if it is required.
• Identify all parties clearly (this would include full names, addresses, full details of assignor and assignee).
• Fully identify the patent (including patent number, title, filing date and all inventors).
• Include translations in most foreign countries.

Please note:

The precise rules for assignment recordals do vary across the world and there may be additional requirements to those listed above, such as the need for a Power of Attorney for example, to make an assignment valid in some countries, so it is always worth checking with your attorney.

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Disclaimer: This document is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Pure Ideas for advice before taking any action in reliance on it.