Transfer of IP rights in Switzerland

A patent can be assigned by succession, enforcement proceedings, court rulings, and contracts such as corporate transactions.

The assignment of the patent, the patent application and the right to the patent may be assigned in whole or in part and is only valid if evidenced in writing. Swiss Intellectual Property law requires both, (i) an undertaking to assign and (ii) a declaration to assign (which is considered to be the executive part of the assignment). In good contract drafting practices, the parties agree on both assignment steps in one document (“…undertake to assign and hereby assign (uno actu)…”).

However, a partial assignment is usually limited to singular and isolated (i.e. non-interrelated) claims. The assignment of geographical sub-areas within Switzerland, certain types of use or embodiments is generally not considered possible. In this case, contractual licensing should be considered.

In general, it is not required to record the assignment in the national patent register to make it effective [declaratory function only], but it is recommended to do so (see Q3).

The request for registration of a patent assignment may be filed by the previous proprietor of the patent (assignor) or by the new proprietor (assignee).

The respective request must contain the written assignment agreement (i.e. an express declaration by the previous owner or a document, e.g. a contract, stating that the patent has been assigned to the assignee).

There is no express requirement under Swiss law or in the instructions of the Swiss Federal Institute of Intellectual Property (IPI) to submit original documents. Copies of the supporting documents are sufficient.

Patent assignments do not need to be notarised or legalised. As a general rule, submissions to the IPI must be written in one of the official languages of Switzerland (i.e. German, French or Italian; Art. 4 Patent Ordinance, PatO). However, with regard to the assignment agreement itself, which is submitted as evidence of the assignment, translation and certification of accuracy requirements may arise if it is submitted in rare languages with which the IPI is not familiar. However, we have seen English agreements submitted as evidence, where no translation was required.

The IPI provides a form for the patent assignment, but the use of this form is facultative.

If the assignment is not registered in the patent register at the IPI, the assignment still remains valid. The record in the patent register has only declarative effect.

However, if the assignment is not registered, it may sometimes not be enforceable against a third party who has acquired rights to or relating to the intellectual property in good faith (i.e. without knowledge of the assignment to the assignee). Nevertheless, the question of whether it is possible to acquire patents in good faith from an assignor who is still registered remains unclear in Switzerland. 

To be valid, the assignment of the patent (or patent application resp. remainders thereto) must be in writing and duly signed by all the assignors, i.e. all patent proprietors assigning the patent. 

In principle, there is no such obligation for the assignment of a patent itself. However, any person who is a party to administrative proceedings under the Federal Act on Patents for Inventions (PatA), but who is not domiciled or has no registered office in Switzerland must designate an address for service in Switzerland unless international law or the competent foreign body permits the authority to serve documents directly in the state concerned.

The IPI does not charge any fees for the formal registration of a patent assignment (change of ownership).

The patent licence agreement is freely configurable within the boundaries of the legal system. The right to use a patent can be licensed in whole or in part. Additionally, the licence may be limited in personal, temporal, forms of use(s), commercial and geographical terms.

There is no requirement to register a licence to a patent in the patent register and it is not a prerequisite for validity, but registration is possible and recommended in certain circumstances (see further information under Q9). 

The request for registration of a licence can be filed by the patent proprietor (licensor) or by the licensee.

The respective request must contain the licence agreement (i.e. an express declaration by which the proprietor grants the licensee the right to use the patent). The application must identify the licensee by name and forename or company name and address.

There is no express requirement under Swiss law or in the instructions of the IPI to submit original documents. Copies of the supporting documents are sufficient.

Licence agreements do not need to be notarised or legalised. As a general rule, submissions to the IPI must be written in one of the official languages of Switzerland and the request for registration must be filed in one of the official languages of Switzerland (i.e. German, French or Italian; Art. 4 PatO), but not the supporting evidence (licence agreement).

There is no respective obligation. Hence, the licence agreement may be entered under its own formal requirements.

Licences not recorded in the patent register are perfectly valid between the parties to the agreement. There is no requirement to register licences and the registration does not in any way establish or strengthen the licence itself. As said earlier, the record of the patent licence in the patent register has declarative effect.

However, an unregistered licence is not enforceable against third parties who acquire the patent in good faith (including in the framework of bankruptcy proceedings).

In principle, there is no obligation to appoint a domestic professional representative. However, any person who is a party to administrative proceedings under the PatA, but who is not domiciled or has no registered office in Switzerland must designate an address for service in Switzerland unless international law or the competent foreign body permits the authority to serve documents directly in the state concerned.

The IPI does not charge any fees for the recording of a patent licence.

Yes, it is possible to pledge a patent.

The registration of the pledge is not required. It has only declarative effect. Nevertheless, it is still recommended to register a pledge with the IPI in the national trademark register, as it will have an erga omnes-exclusionary effect and prevents third parties from acquiring the patent in good faith.

A trademark can be assigned by succession, enforcement proceedings, court rulings, and contracts such as corporate transactions.

The assignment in whole or in part of a trademark is only valid if evidenced in writing. Swiss Intellectual Property law requires both, (i) an undertaking to assign and (ii) a declaration to assign (which is considered to be the executive part of the assignment). In good contract drafting practice, the parties agree to both assignment steps within in one document (“…undertake to assign and hereby assign…”).

In general, it is not required to record the assignment in the national trademark register to make it effective [declaratory function only], but it is recommended (see Q3).

However, a different rule applies to guarantee and collective marks: The assignment of a guarantee or collective mark is only valid if it is entered in the register (constitutive effect).

The request for registration of a trademark assignment may be filed by the previous owner of the trademark (assignor) or by the new owner (assignee).

The respective request must contain the written assignment agreement (i.e. an express declaration by the previous owner or a document, e.g. a contract, stating that the trademark has been assigned to the assignee).

There is no express requirement under Swiss law or in the instructions of the IPI to submit original documents. Copies of the supporting documents are sufficient.

Trademark assignments do not need to be notarised or legalised. As a general rule, submissions to the IPI must be written in one of the official languages of Switzerland (i.e. German, French or Italian; Art. 3 of the Ordinance on the Protection of Trademark and Indications of Source, TmPO). Therefore, the IPI may require a translation of official documentary evidence that is not in an official language of the Swiss Confederation and a certification of its accuracy.

The IPI provides a form for the trademark assignment, but the use of this form is facultative.

If the assignment is not registered in the trademark register at the IPI, the assignment still remains valid. The record in the trademark register has declarative effect, except in the case of assignments of guarantee marks and collective marks (constitutive effect).

However, if the assignment is not registered, it is not enforceable against a third party who has acquired intellectual property rights from the assignor in good faith (i.e. without knowledge of the assignment to the assignee).

TThe assignment of a Swiss trademark may cover only a part of the goods claimed (factual division). No specific formalities are required. However, individual exclusive rights (qualitative division) or a territorial division of the Swiss trademark (regional division) are not possible.

A partial assignment of the trademark has the effect that the original trademark with the restricted list remains in force and a new trademark registration is created with the assigned part of the list. The term of protection and the filing date of both trademarks remain unchanged.

The assignment of a Swiss trademark may cover only a part of the goods claimed (factual division). No specific formalities are required. However, individual exclusive rights (qualitative division) or a territorial division of the Swiss trademark (regional division) are not possible.

A partial assignment of the trademark has the effect that the original trademark with the restricted list remains in force and a new trademark registration is created with the assigned part of the list. The term of protection and the filing date of both trademarks remain unchanged.

In principle, there is no obligation to appoint a domestic professional representative. However, any person who is a party to administrative proceedings under the Swiss Trademark Protection Act (TmPA) but who is not domiciled or has no registered office in Switzerland must designate an address for service in Switzerland unless international law or the competent foreign body permits the authority to serve documents directly in the state concerned.

The IPI does not charge any fees for the formal registration of a (partial) trademark assignment (change of ownership). However, a fee is charged for the assignment of international trademarks.

The trademark licence agreement is freely configurable within the boundaries of the legal system. The licence may be limited in personal, factual, temporal and geographical terms.

With the exception of the licensing of a collective trademark, where the entry in the register has constitutive effect, the entry of the licence in the trademark register is not a prerequisite for validity but registration is possible and recommended under certain circumstances (see Q10).

The request for registration of a licence can be filed by the trademark owner (licensor) or by the licensee.

The respective request must contain the licence agreement (i.e. an express evidence of the trademark owner granting the licensee the right to use the trademark). The application must identify the licensee by name and forename or company name and address.

There is no express requirement under Swiss law or in the instructions of the IPI to submit original documents. Copies of the supporting documents are sufficient.

Licence agreements do not need to be notarised or legalised. As a general rule, submissions to the IPI must be written in one of the official languages of Switzerland (i.e. German, French, or Italian; Art. 3 TmPO). The IPI may require a translation of documentary evidence that is not in an official language, as well as a certificate of its accuracy.

There is no respective obligation. Hence, the licence agreement may be entered after its own formal requirements, if any. 

Licences not recorded in the trademark register are perfectly valid between the parties to the agreement. There is no requirement to register licences and the registration does not in any way establish or strengthen the licence itself. As said earlier, the record of the trademark licence in the trademark register has declarative effect, except with respect to collective marks (constitutive effect).

However, an unregistered licence is not enforceable against third parties who acquire the trademark in good faith (including in the framework of bankruptcy proceedings).

No, there are no specific formalities in case a trademark is only partially licensed. 

In principle, there is no obligation to appoint a domestic professional representative. However, any person who is party to an administrative procedure under the TmPA and who is not domiciled or has no registered office in Switzerland must designate an address for service in Switzerland, unless international law or the competent foreign body permits the authority to serve documents directly in the state concerned.

The IPI does not charge any fees for the recording of a trademark licence.

Yes, it is possible to pledge a trademark.

The registration of the pledge is not required. It only has declarative effect. Nevertheless, it is still recommended to register a pledge with the IPI in the national trademark register as it will have an erga omnes-exclusionary effect and prevents third parties from acquiring the trademark in good faith.