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Intellectual Property Transactions

Intellectual Property is traded like other types of property.  Patents, Trade Marks and Designs can be bought and sold and licensed.

Phillips and Leigh can prepare assignments and licences of intellectual property rights.

If these already exist we can record the transactions.

The information we require if you wish our help in recording assignments includes:

Patents
UK – a copy of the assignment, signed by both parties.

It should contain: The date the transaction took place; The name and address of both parties; and identify of all rights concerned.

No notarisation or certification is necessary.  We do not need specific authorisation from the assignor or assignee.

In addition we may need: A verified translation into English (if applicable).

EUROPEAN – transactions can be recorded: during the application stage; during the opposition period; during appeal proceedings.

The transaction should be in writing and contain signatures of all parties concerned.  We recommend filing a certified copy of the transaction at the EPO.  Additional registration nationally may be required.

PCT – We can record a change in applicant on a PCT application at any time before it expires, by simple notification to WIPO.  An authorisation from the assignor will be required if not already in our possession.  An authorisation from the assignee will be required if we are to continue to act as agent.

OVERSEAS - Via our long-established network of overseas associates, Phillips & Leigh can instruct applications to record assignments in any country of the world.  A local power of attorney may be required.

Trade Marks
UK
– a copy of the assignment, signed by both parties.

It should contain: The date the transaction took place; The name and address of both parties; and identify of all rights concerned.

No notarisation or certification is necessary.  We do not need specific authorisation from the assignor or assignee.

In addition we may need: A verified translation into English (if applicable).

COMMUNITY TRADE MARK – transactions can be recorded at any time in the life of the registration. The transaction should be in writing and contain signatures of the parties concerned.  We need to file a copy of the assignment at OHIM with the recordal application.

Currently we need either a General Authorisation or a Specific Authorisation from both parties.

INTERNATIONAL –simple notification to WIPO, at any time during the life of the registration provided that the assignee is entitled to own an International Mark.  An authorisation will be required.

OVERSEAS - Via our long-established network of overseas associates, Phillips & Leigh can instruct applications to record assignments in any country of the world.  A local power of attorney may be required.

Designs
UK – a copy of the assignment, signed by both parties.

It should contain: The date the transaction took place; The name and address of both parties; and identify all rights concerned.

No notarisation or certification is necessary.   We do not need specific authorisation from the assignor or assignee.

In addition we may need: A verified translation into English (if applicable).

COMMUNITY DESIGN –– transactions can be recorded at any time in the life of the registration.  The transaction should be in writing and contain signatures of the parties concerned.  We need to file a copy of the assignment at OHIM with the recordal application.

Currently we need either a General Authorisation or a Specific Authorisation from both parties.

INTERNATIONAL - An international registration system exists (the “Hague Agreement”) and may be applicable to your needs in certain circumstances.  Phillips & Leigh will give you individual advice.

OVERSEAS - Via our long-established network of overseas associates, Phillips & Leigh can instruct applications to record assignments in any country of the world.  A local power of attorney may be required.

NOTE:
Currently, UK Intellectual Property transactions are not subject to tax.
But:
If your assignment took place before April 2002 tax may apply.

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