Key Reasons for Recording Changes on the Register

As it is not a statutory requirement to record any changes such as change of name, address or transfer of ownership, as well as recording licenses and securities, at the relevant IP Offices, many people ask why it is so important to do so.

Below are a few key reasons why it should be done and why it is important to do it as soon as the transaction takes place: -

- The registration of a transfer of ownership creates an official record showing who owns the IP and making the new owner’s rights publicly available, thus reducing disputes and helping to prevent fraud.

- Notice to Third Parties - Delaying registration could risk losing rights if another claim is filed earlier.

- Some IP Offices will only accept an Assignment/Merger etc within six months of the date of execution.  In these cases, if not filed within the relevant period the document will become unregisterable.

- Recording changes centrally at WIPO or EPO, for example, is very cost effective and saves you from the cost and administration of recording the changes in each national jurisdiction.

- Recovering costs - In UK infringement proceedings, any damages are only recoverable from the date of registration of the transfer/license.

- Without registration, new owners may have difficulty enforcing rights in court or against infringers.

- Important if you are selling a company, it is important to be able to ensure any potential buyers see clear, official proof of ownership.

- If the recordal is delayed it can become very complicated to execute the necessary documents required to record the transfer later. For example, it may be hard to locate all the necessary documents or obtain any signatures required (especially if a company is in administration or has been dissolved), thus making the whole process more time consuming and expensive.

So, you can see, recording changes on your IP as soon as it occurs can save money in the long run and is essential for enforcing rights, avoiding disputes and protecting commercial value.

The formalities team here at Mathisen & Macara LLP have a lot of experience in registering changes on IP portfolios please do not hesitate to contact us if you have any questions or require any assistance in registering a change on your IP portfolio.