During the examination of a pending patent application or after the patent is granted, the original owner may transfer ownership to another entity or party through an "Assignment." The original owner should record the assignment with the TIPO by filing an assignment application sheet along with a copy of the proof of assignment.
Since the patent owner may transfer the patent rights under different conditions, we have provided relevant information below for reference:
Patent rights, as a form of intellectual property rights, can be inherited. The inheritance of patent rights takes effect upon the occurrence of the inheritance fact.
- Is recording the assignment with the TIPO necessary?
The assignment of patent rights becomes effective on the date when both parties indicate their agreement. However, to have locus standi against a third party, it must be recorded with the TIPO.
- The following documents and official fees are required for assignment recordation:
- Application sheet
- Official fee of NT$2000
- Copy of proof of assignment: assignment of contract, proof of merger and acquisition, or other relevant documents (such as agreement or judgment documents obtained in accordance with the law)
- Recording multiple assignments for a patent simultaneously
If the patent right has been changed twice, the assignments can be recorded simultaneously with an official fee of NT$2000. However, proof of assignment is required for each assignment.
- Assignment of derivative Design patent:
The assignment of a derivative Design patent right should be recorded together with the assignment of the original patent at the same time. However, separate assignment applications, along with their respective sheets and official fees, should be filed for each patent.
- Is the original Certificate of Registration required for an assignment application?
The original Certificate of Registration is no longer required when filing an assignment application. The TIPO will issue a new Certificate after the assignment is recorded.
- Assignment during the period of patent right reinstatement:
The application for reinstatement of patent rights and the assignment application can be filed at the same time. The reinstatement application must be filed by the original owner (assignor), but the assignee can pay the annuity fees.
However, since the owner of the rights has changed, the inheritance of the patent must be recorded with the TIPO. This requires submitting the necessary documents along with an official fee of NT$2000.