Transfer of IP rights in the United Kingdom

A patent can be transferred by legal transaction, court order, will or succession.

There is no requirement to record an assignment at the UK Intellectual Property Office (IPO) in order for it to become effective. It is nevertheless advisable to do so.

If signed by, or on behalf of, the assignor, no documentary evidence to establish the assignment needs to be submitted.

Alternatively, the assignee can submit documentary evidence to establish the assignment, for which submission of a copy is sufficient.

There are no legalisation or notarisation requirements.

For registration, documents not in English must be translated.

Registering an assignment must be done on Patents Form 21.

Failing to register an assignment within 6 months impacts the ability to claim costs and expenses during patent litigation.

Later assignments may have effect over earlier assignments if the earlier assignment is not registered.

The record in the patent register has a declarative effect.

Assignments require the consent of all proprietors.

No. But whoever files the request must have a UK address.

Form 21 incurs a fee of  GBP 50 (as of March 2024).

Patent licences may be exclusive, sole or non-exclusive. In certain situations, there may also be compulsory licences.

There is no requirement to record a licence at the UK Intellectual Property Office (IPO) in order for it to become effective. It is nevertheless advisable to do so.

There is no requirement for a licence to be in writing.

If signed by the licensor, no documentary evidence to establish the licence needs to be submitted.

Alternatively, the licensee can submit documentary evidence to establish the licence, for which submission of a copy is sufficient.

There are no legalisation or notarisation requirements.

For registration, documents not in English must be translated.

Registering of a licence must be done on Patents Form 21.

Failing to register a licence within 6 months impacts the ability to claim costs and expenses during patent litigation.

Later licences may have effect over earlier (exclusive) licences if the earlier licence is not registered.

The record in the patent register has a declarative effect.

There is no need to appoint a domestic professional representative.

Form 21 incurs a fee of GBP 50 (as of March 2024).

It is possible to pledge a patent. There is no requirement to record a pledge on the patent register, although it is possible to do so. Nevertheless, it must be recorded at the UK register of companies, Companies House.

A UK trademark registration may  be transferred by assignment, testamentary disposition or operation of law.

Until an application has been made to record the assignment, the assignment is ineffective against a person who acquires a conflicting interest in the registration and who was unaware of the assignment. 

A full assignment of a UK trade mark registration is recorded using Form TM16.

Supporting evidence of the assignment only needs to be provided if both parties or their representatives do not sign the Form TM16. Copy documents are sufficient.

There are no legalisation or notarisation requirements, but any supporting evidence should be submitted in English or with a certified translation.

Until an application has been made to record the assignment, the assignment is ineffective against a person who acquires a conflicting interest in the registration and who was unaware of the assignment.

 If the assignment is not recorded within six months of the transaction, the assignee will not be entitled to an award of costs in any court proceedings in respect of infringing acts carried out before the recordal. The record in the trademark register has a declarative effect.

Such an assignment requires the consent of all proprietors. The same Form TM16 is used, which allows multiple proprietors to be named.

Yes, such assignments are recorded on Form TM16P (official fee GBP 50).

No if the new owner’s address is in the UK, Gibraltar or Channel Islands.

Yes if the new owner’s address is outside the UK, Gibraltar or Channel Islands.

The official fee for each Form TM16 submitted is GBP 50. Each form may list multiple trademarks.

Trademark licences may be exclusive, sole or non-exclusive.

Until an application has been made to record the licence, the licence is ineffective against a person who acquires a conflicting interest in the registration and who was unaware of the licence. 

A licence of a UK trade mark registration is recorded using Form TM50

A copy of the licence agreement  only needs to be provided if the trademark owner or its representative does not sign the Form TM50.

There are no legalisation or notarisation requirements, but any supporting evidence should be submitted in English or with a certified translation.

Until an application has been made to record the licence, the licence is ineffective against a person who acquires a conflicting interest in the registration and who was unaware of the licence.

Recordal also provides certain others benefits, including:

1. In infringement proceedings brought by the licensor, any loss suffered or likely to be suffered by a licensee shall be taken into account; and
2. In the context of an exclusive licence, the licensee may bring infringement proceedings in its own name (subject to the licence agreement permitting this).

If the licence is not recorded within six months of the transaction, the licensee will not be entitled to an award of costs in any court proceedings in respect of infringing acts carried out before the recordal.

The record in the trademark register has a declarative effect.

The completed Form TM50 must confirm whether the licence (i) is exclusive; (ii) is limited to a specific geographical area in the UK; and  (iii) is in respect of all or some of the goods/services covered by the registration.

No. But whoever files the Form TM50 must have an address in the UK, Gibraltar or Channel Islands.

The official fee for each Form TM50 submitted is GBP 50. Each form may list multiple trademarks.

A security interest (fixed or floating) over a UK trade mark registration is recorded using Form TM24 (official fee GBP 50).

Until an application has been made to record the security interest, the security interest is ineffective against a person who acquires a conflicting interest in the registration and who was unaware of the security interest.