Patent applications and patents are intangible assets and are transferable. In practice, rights holders often transfer patent applications or patents to realize their economic and commercial values. For the assignment of a patent application or patent, the parties shall go through registration formalities to make it take effect. This article briefly introduces the important matters of assignment registration for readers' reference.
1. Assignments take effect after registration
1.1 The assignment of a patent application or patent shall be registered with China National Intellectual Property Administration (the "CNIPA").
For the assignment of a patent application or patent, the assignor and the assignee shall sign a written assignment contract and go through the registration formalities with the CNIPA. The assignment takes effect from the date of official registration.
If the assignor and the assignee sign a written assignment contract only but do not register the assignment with the CNIPA, the assignment shall not take effect. The patent application or patent is still registered under the name of the assignor and is the property of the assignor. Assuming that the assignor later signs an assignment contract on the same patent application or patent with a bona fide third party and goes through the registration formalities with the CNIPA to register the patent application or patent under the name of the bona fide third party, then the later assignment would take effect and the patent application or patent would be the property of the bona fide third party. The assignee of the first assignment has no right to ask the bona fide third party to return the patent application or patent; the assignee only has the right to claim the assignor’s liability for breaching the contract based on a written assignment contract.
Therefore, to make an assignment take effect, the assignor and the assignee shall go through the registration formalities with the CNIPA.
1.2 Registration Formalities for the Assignment of a Patent Application or Patent
To go through the registration formalities for assignment of a patent application or patent, the assignor and the assignee shall provide the following documents:
1) The assignment contract signed by both the assignor and the assignee;
2) Power of Attorney signed by the assignee (if a patent agency is appointed);
3) “License of Technology Export" or "Registration Certificate of Technology Export Contract" given by the Ministry of Commerce if the assignment of an invention or a, utility model patent application or patent is foreign related (See introduction below).
The CNIPA shall examine the relevant assignment registration documents they received, and if the documents meet official requirements, the CNIPA will register the patent application or patent under the name of the assignee and publish the assignment registration details of the patent application or patent in the patent gazette, whereupon the assignment takes effect.
2. Special Requirements for Foreign-Related Assignment Registration
If an invention or a utility model patent application or patent is assigned from an entity or individual in the Chinese Mainland to a foreign individual, foreign enterprise or other foreign organization, or to an individual, enterprise or other organization in Hong Kong, Macao or Taiwan, the assignor shall go through the formalities for technology export with the Ministry of Commerce (or its subordinate local bureau) and obtain a “License of Technology Export" or "Registration Certificate of Technology Export Contract" before going through the registration formalities with the CNIPA.
When going through the technology export formalities for the foreign-related assignment of an invention or a utility model patent application or patent, the assignor shall obtain the “License of Technology Export" if the technology is restricted from export, and shall obtain the “Registration Certificate of Technology Export Contract " if the technology is free of export.
2.1 An assignment contract for technology restricted from export takes effect after a “License of Technology Export" is obtained.
For the assignment of a patent applications or patent related to technology restricted from export, the assignor shall file a "Technology Export Application" with the Ministry of Commerce; the competent department under the Ministry of Commerce shall examine the application and make a decision on approval or non-approval.
If the technology export is approved, the Ministry of Commerce shall issue a "Letter of Approval Intent on Technology Export" to the assignor. Then, the assignor may negotiate the assignment with the assignee, sign a patent application or patent assignment contract.
After the assignment contract is signed by the assignor and the assignee, the assignor shall file the "Letter of Approval Intent on Technology Export", the assignment contract, the technical materials of the patent application or patent to be assigned with the Ministry of Commerce to apply for a “License of Technology Export".
The competent department under the Ministry of Commerce examines the application and makes a decision on whether to approve the technology export or not. If a decision to approve is made, then a “License of Technology Export" will be given.
The foreign-related assignment contract of a patent application or patent takes effect from the issue date of the “License of Technology Export".
2.2 An assignment contract for technology free of export shall be registered with the Ministry of Commerce for obtaining a "Registration Certificate of Technology Export Contract".
For the Assignment of a patent application or patent related to technology free of export, the assignor shall file an application for registering the assignment contract together with a copy of the assignment contract and technical materials of the patent application or patent with the Ministry of Commerce.
The competent department under the Ministry of Commerce, upon receipt of the application and related documents, conducts examination and makes registration by issuing a "Registration Certificate of Technology Export Contract" if the documents meet official requirements.
The assignment contract of a patent application or patent of this category takes effect when it is legally concluded; registration is not required for the contract to take effect.
The assignor could apply for a “License of Technology Export" and "Registration Certificate of Technology Export Contract" before the local commercial bureau. We also could assist in obtaining such license or certificate before Beijing Municipal Commerce Bureau.
Design patents do not involve in import or export of technology. Therefore, foreign-related assignment of a design patent does not require the above-mentioned export formalities.
In summary, where a patent application or patent is assigned, the assignment takes effect only after going through the registration formalities with the CNIPA and being registered in the official docket, i.e. recording the patent application or patent under the name of the assignee. If the assignment is foreign-related, technology export licensing formalities shall be gone through. An assignment contract for technology restricted from export takes effect only after a “License of Technology Export" is given; and an assignment contract for technology free of export shall be registered with the Ministry of Commerce for obtaining a "Registration Certificate of Technology Export Contract".
In practice, assignments vary differently. If you have any questions, please feel free to contact us patent@afdip.com.
