In a helpful series of articles, the law firm Novagraaf addresses the issue of good practices concerning intellectual property
ownership (particularly internationally) that make the future transfer of
intellectual property easier. The first
article titled, “IP Ownership Transfers: Getting Your IP Rights in Order,”
concerns, in part, potential problems with the ownership of proposed acquired
intellectual property that can be addressed in due diligence. The article discusses the importance of
ensuring the present owner of the acquired rights has a contractual obligation,
for example, to assist in recording changes in ownership as well as providing
assistance to utilize future rights. A
recent article, titled, “IP Transfers: Potential Pitfalls and Problems to Solve,” by Tom Farrand, discusses the quality of intellectual property records
maintenance. The article provides a
helpful nonexclusive list of common pitfalls:
·
Difficulty
tracking and identifying which IP assets have been updated and which have not;
·
Erroneous
record of title may jeopardise the validity of IP in some jurisdictions;
·
Recently
filed applications can be held up by IP registered in the old name;
·
Original
evidentiary documents could be irretrievably lost;
·
Prior
owners may go out of business, cease to exist, move or change names;
·
Prior
owners may be unwilling to cooperate after the passage of too much time,
especially if personnel have changed since the original transaction;
·
Default
in applications and registered IP may occur if official documents are delivered
to the old owners and answer deadlines are missed, potentially causing the
rights to be lost;
·
Inability
to file suit against infringers if the IP is in the wrong name;
·
Inability
to get a temporary restraining order in infringement matters;
·
For
trademarks, third parties may be more likely to adopt conflicting marks if they
think the owner is defunct; and
·
May
make divestiture of assets more difficult or may get lower offer if ownership
appears split or the chain of title is not up to date.
There are several others helpful articles available,
including “IP Recordals: An Administrative Burden for In House Teams,” “IP Transactions: How to Manage Pending Applications,” and “IP Transactions: Managing Unregistered or Associated IP Rights.”
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