When it comes to intellectual property ownership, a recordals project is something you want to make sure you’re getting right.
The process of an IP recordals project at times can be complicated for in-house legal teams. It requires detailed and accurate information specific to the applicable countries and jurisdictions. The documentation required for changes to IP records can present challenges and fees that need to be considered. There are also other contributing factors to consider when managing IP records.
In this article, we’ll take a look at requirements as they pertain to intellectual property ownership and how in-house legal teams can effectively plan a recordals project.
Why the Intellectual Property Ownership Process Can Be Complex
A key aspect of planning an IP recordals project is understanding the budget and resources needed to complete it. Considering the project from start to finish, this should include any preparatory, executionary, and maintenance work required.
While it may seem that preparing the IP recordal documentation is the bulk of the project, an in-house team may also need to monitor projects on an ongoing basis. For example, the legal team could be postponing a recordal until the IP renewal filing, but a change in business circumstances might require more immediate action.
Or, let’s say a recordal has been filed and requires status monitoring for additional or updated paperwork. Knowing local intellectual property ownership laws in different regions can help you foresee potential issues so you can plan and allocate the budget and resources required.
Filing an IP recordal with accurate paperwork and ensuring that the relevant authorities accept it requires a substantial amount of administrative work. The resources needed to assess, execute, and monitor the progress of a recordal filing is an essential factor for an in-house legal team to consider when planning their project.
One of the primary considerations for in-house legal teams with IP recordals projects is planning the timeline. The timeline will provide an overview for the organization on budget and resource allocation, and it should also consider circumstances, such as specific application requirements in different countries, regions, and jurisdictions.
A timeline will serve as an indicator for potential risks or issues that may require additional attention so that the team can be prepared for them – allowing for an expedited process rather than dreaded bottlenecking.
Additionally, a project timeline gives the team a realistic overview of the budget and resources required to complete the project. Thus, it can help determine whether or not there’s a need for an external intellectual property ownership specialist, and where those resources may be most effective.
Now let’s consider the documentation that will be necessary for the recordals process. Having everything you need from the get-go will make for a smoother experience, so we want to make sure you’re adequately prepared.
Documents You’ll Need for Proper Intellectual Property Ownership
Arguably the most critical documents in an IP recordals project are the applications to record a change or assignment on the relevant register. These forms can be accessed through national offices that deal with intellectual property ownership, and can generally be filed as a hard copy or online.
These recordal forms will require the details of the IP, as well as of the assignment which has led to the recordal project. Keep in mind that, when completing these forms, owners must provide details of the IP itself – including, for example, any relevant reference numbers and descriptions. Don’t leave those out of the equation. Be as thorough as possible.
Additionally, owners will be required to provide their name and contact details, along with those of the party or parties to whom the property is being assigned. These forms also need the date from which the assignment is to be deemed effective.
Filing these forms is usually accompanied by a fee which, although typically nominal, has to be paid for each separate IP change. In some territories, including for business done in the UK, a fee document must be submitted along with the submission of any document which costs money. IP owners must, therefore, be aware of any fees required in the filing of their application – along with any further forms that need to accompany those fees.
Other evidentiary documents may also be required for the intellectual property ownership recordals project, depending on the circumstances. For example, assignment agreements could be required. These serve to support any other official documentation which is needed for the offices in those territories where the IP is registered, as well as enabling the primary application forms to be completed accurately.
Although not a document in its own right, document legalization, too, is a facet of the extensive documentation required for an IP recordals project. Document legalization is effectively a stamp of approval from a state – verifying the official status of a document. It’s especially essential to secure document legalization during a project where the IP is registered in multiple territories.
If you choose to hire external intellectual property ownership experts to handle the IP recordals project, a power of attorney document will also be needed. This enables the external agents to make decisions on behalf of the client. The length of the process will be exacerbated without power of attorney, as external agents would need to receive the input of the owner at every turn before being able to make a decision.
Continue reading if you’d like to know some tips on how to tell if your intellectual property ownership process is managed properly. Time to get your ducks in a row with the right knowledge!
Ways to Know If Your Intellectual Property Ownership is Well-Managed
The importance of defining your goals in IP recordals projects cannot be overstated. Within those goals, you should assess what has to happen more quickly and what can wait. Prioritization can be a crucial element of intellectual property ownership.
If you have recently acquired another company, for example, you’ll likely need to prioritize intellectual property ownership information related to the newly acquired assets before you look at your existing portfolio. Similarly, there are likely jurisdictions in which your business is more active, or where it faces more threats from competitors or counterfeiters. It makes sense to establish where the risk of failure is highest, and prioritize your recordals work accordingly. Always cover your bases.
All recordals projects have costs attached to them, as discussed, and with large portfolios across multiple jurisdictions, those costs can add up very quickly. Again, costs include any official fees associated with changes to the record, the cost of engaging agents where necessary to file official documents, and the various internal expenses related to the sheer time and resources required to manage the project.
There are also various hidden costs, such as translating documents into local languages, aligning customs recordals to ensure they’re up-to-date, and the costs of legalizing documents. Some jurisdictions also put strict deadlines on recording changes of ownership information, and failure to meet these can cost money while also placing the asset at risk.
Understanding the nature and size of these costs will help you manage your IP recordals project more effectively. It may be that, once you have analyzed the size of the task in front of you, you decide only to undertake a partial recordals project, in which you deal with the critical assets and leave the rest until you can justify more of an investment.
This approach will be faster but is likely to cost more in the long-run while leaving you open to higher risk. Thus we recommend looking into getting a specialized intellectual property ownership team on your side for the project.
If taking on recordals projects in-house, be sure to account for all of these elements, so there are no surprises along the way. You’ll know the process is being well-managed if things are going smoothly. If you decide on an external team to help you, they should be open to consulting with you every step of the way to ensure you’re comfortable with the relationship and workflow.
Most importantly, they need to make sure that your recordals project is achieving what you need it to. Now, we talked a little about why keeping everything up-to-date is essential, but let’s examine why a bit more closely, so you fully understand the weight of this critical component.
The Importance of Keeping Your Intellectual Property Ownership Updated
The purpose of IP records is to enable public awareness of the details of any existing intellectual property ownership rights. This is so that both the public can recognize and respect IP rights, and so competitors can know the parameters of these rights to avoid interference.
Third parties looking to enter into license agreements regarding your intellectual property ownership may also rely on these contact details to initiate conversations with you. If they can’t get in touch, you could be losing out on a valuable trade.
Additionally, the records must contain up-to-date contact information to enable the relevant authorities to get in touch at a moment’s notice. Outdated information about your rights may lead to an inability, or you may miss out on receiving royalty payments.
Goods can be seized at Customs if there are inconsistencies in details and you’ll want to avoid any penalty for your company or client’s brand. Discrepancies in IP records in some territories could even mean that new applications or renewals might be rejected, let alone posing a problem for your current project.
As we can see, keeping all the necessary items updated won’t just give you peace of mind, but it can also save you from costly mistakes. Doing this right saves money and time, too, as with a well-maintained intellectual property ownership record, team members will be able to focus on their other tasks – rather than scrambling to try to get the fixes in place by all the deadlines.
By now we’d like to think you’re convinced about the importance of following the steps to intellectual property ownership correctly, and you may be wondering: so how do I get started with the process? Allow us to outline the necessities for you below so you can dig in.
Where to Start your Recordals Project for Intellectual Property Ownership
Whenever a company undergoes a significant change, IP counsel should think about whether any recordal work is required. Sometimes it’s obvious. If you acquire another company, there will almost always be a need to record the change of ownership of any trademark assets.
But it’s not just on these momentous occasions that a business might need to be thinking about recordals for intellectual property ownership. Perhaps the most significant risk businesses run when it comes to recordals is missing something in the general course of operations which then becomes problematic at a later date.
Therefore, it makes sense for all companies not just to have a means of reliably identifying scenarios in which they should be thinking about recordals – but also a checklist of sorts for what to do once they’ve established that it’s indeed necessary.
Different companies will have different needs when it comes to recordals, and many factors will influence these needs. Thus, for many companies, the best starting point is to do an audit:
- Assess current assets and identify weak spots and inconsistencies, including whether registrations are complete and comprehensive and whether international registrations are designated in the right places.
- Consider new projects and how these will affect the overall portfolio.
- Look at the different territories in which you have rights, and assess whether there are particular issues in specific places.
- If there have been any changes or restructurings, or if you have acquired or divested rights, look at whether these are up to date, consistent and robust.
- How are you managing renewals and recordal changes? If through an external provider, are they doing all of it? Is it effective?
Once you’ve established where the weaknesses are, there are several alternatives for what to do next. A certain amount of prioritization can be appropriate in intellectual property ownership, though we tend to recommend you try and address recordals in one go rather than managing them piecemeal.
This is because while the initial outlay may be higher with a holistic approach, the overall spend is likely to be lower, and you reduce the risk of missing essential elements. Solving the immediate issues is only the first step to ensuring your recordals strategy is effective. Smart companies treat this as an ongoing issue, either in conjunction with an external provider or in-house.
Then, once the initial work has been done to tidy up the portfolio, the aim should be to embed good practice in the organization – so that when something changes, whoever is responsible for making that change knows how to ensure that the trademark in question is serving the purpose it’s meant to.
We’ve gone over a lot of material, so before we wrap up this guide, here’s a quick reference for you to follow, once again, make sure you don’t miss any main requirements. You can treat these steps as a summary, so you know you’re still hitting all the key points when jumping head-first into the complex world of intellectual property ownership.
Don’t Forget These Steps in Planning Intellectual Property Ownership Projects
Once again, there are several reasons why you might be going about this intellectual property ownership recordals project. Perhaps your corporation is involved in a planned or recent merger or acquisition, divestiture, renaming, or some other restructuring that will impact your IP portfolio.
Our clients often ask us how to prioritize the management of large recordal projects. Based on our experience, these are the top 10 priorities you need to consider when organizing a significant recordal project:
- New filings
Do you have any new filing projects either in progress or in the pipeline, such as in the name of a new owner?
If so, it’s important to identify the countries involved and prioritize them in your recordal project to avoid unnecessary citations or office actions due to inconsistencies in intellectual property ownership on record (be careful because this issue will come up in a large number of countries).
- Renewals
Do you need to file any ownership or name changes in advance of the renewal deadline? Do you want to renew the trademark in the new owner’s name?
The answers to these questions will vary depending on the nature of the change, the document requirements in a given jurisdiction, the timeline for the change, and the renewal deadline. It’s essential to consider renewals when setting your priorities to avoid filing a renewal incorrectly (and thus endangering the entire registration).
- Customs recordals
In some countries, as we learned, your goods may be seized at Customs if the trademark ownership information is not current and entirely accurate. Be sure to prioritize any countries where you may expect issues with Customs.
- Late filing fee countries
A handful of countries impose fines for the late filing of ownership changes. The time frame depends on the country – this could range anywhere between 4 weeks and 12 months. Fees may compound, making your simple change of name recordal inordinately expensive if you wait too long (examples can be seen here, in 9 Hidden Costs).
- Licenses
Do you have license agreements in place in a particular country? If so, discrepancies between the licensor and the registered IP owner can result in delays or non-payment of royalties and other financial consequences. Be sure to prioritize these countries in your recordal project to avoid problems that can have an immediate financial impact.
- Key territories for the business
What are your key territories? Depending on the country and your position in the market, you may choose to prioritize certain countries to ensure your project plan (and budget) are in line with the needs of the business.
- Territories with legal proceedings in progress
Do you have any “active” territories covered by the intellectual property ownership recordal project with ongoing litigation, oppositions or other such legal matters involving rights? If so, you should prioritize this recordal work – having an incorrect IP owner on record may cause significant problems for such proceedings.
- Associated TMs / All-or-nothing (Change of Name/Address & Merger only)
There are countries where, due to local legal requirements, special attention must be paid to “similar” trademarks when there is an Assignment of rights. Likewise, there are a handful of countries requiring all IP rights in the name of an entity to be updated simultaneously. Giving these countries priority will help avoid issues down the road with new filings, renewals, etc.
- WIPO
Don’t forget about your international registrations! Let’s say you file a change in China but don’t submit the change against the International Registration designating China; then you will likely receive an office action from the examiner there.
While you may not encounter this problem with the national PTOs for all countries designated by the IR, you can bet you’ll be facing it in a few key territories (which, again, should be prioritized in your recordal project for your intellectual property ownership).
- Are there any further planned changes on the horizon for the corporations involved?
For instance, is the Assignor or current IP holder foreseen to undergo a name change, merger, or be dissolved entirely in the near future? Are there any other divestitures on their way that you know of? Will the entity remain under your corporation’s ownership, or will it be part of the divestiture?
Sound Like a Lot to Stay on Top of? Here’s Where You Can Get Help
Given these varied requirements for documentation, it’s advisable that clients wishing to undergo an IP recordals project hire external agents with expertise in managing recordals in multiple territories.
With Brandstock as your power of attorney, we can help secure the best outcome for clients while removing the burden. This way, your intellectual property ownership recordals are conveniently handled for you. You can be confident that you won’t be required to do anything further, unless absolutely necessary.
While it’s certainly possible to manage an IP recordals project in-house, it’s likely to be time-consuming and resource-intensive, like you read in the article. Brandstock handles each project swiftly and with the utmost care and attention paid to details. Our successful process is all thanks to a team with the expertise in reducing both the time and costs of preparing and filing necessary documentation.
If you’d like advice or help with your recordals work, please reach out – we have decades of experience and can help you avoid unnecessary business risk in the process.
Are you not feeling ready to bring on a new partner? We advise you, in the meantime, to download our resourceful, commitment-free eBook on everything else you need to know if you’re going through a merger or acquisition. If you’re ready to get to know us and find out exactly how we can help your business or client, you should take advantage of this opportunity get 15% OFF your intellectual property ownership recordal project, right now!
