Wednesday 29 March 2017

Good Practices Concerning Intellectual Property Ownership: Articles by Novagraaf

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.

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