Notarial Requirements When Transferring Intellectual Property

When a company transfers patents, trade marks or registered designs — in a sale of the business, a group restructure, or moving IP into a holding company — the transfer usually has to be recorded at each IP office where the rights are registered. Until it is, the register may still show the old owner, which can matter when the new owner tries to renew, license or enforce.

Each IP office sets its own formalities for recording a change of ownership, and they differ more than people expect. Some record an assignment on a simple signed document. Others require the assignment, or a power of attorney to the local IP agent, to be notarised and then apostilled or legalised. The formalities for the same portfolio can therefore be light in one country and heavy in the next.

Ask the foreign IP attorneys first, country by country

The IP attorney or agent in each jurisdiction knows what their office will accept. Before anything is signed, get from each one:

• whether their office needs the assignment itself, a short-form confirmation of it, or some other declaration of transfer
• whether it must be notarised, and whether it then needs an apostille or legalisation
• whether they need a power of attorney, and in what form
• whether their office keeps the original, and whether it must be in their language

Put the answers in a table, one row per country. That table decides how many documents, originals and authentication steps you need, and it usually shows that only some countries need the notary at all.

One agreement, several short-form assignments

A common approach in multi-country transfers is to sign a main agreement containing the commercial terms, and separate short-form assignments for recording at each office. The short forms identify the rights and the parties and confirm the transfer, without the price or the rest of the deal.

There are two practical reasons for this. Recorded documents are often open to public inspection, so filing the full agreement can put commercial terms on a public register. And a short document in the form an office expects is easier to notarise, translate and have accepted than a long agreement.

Whether short-form assignments are appropriate, and how they relate to the main agreement, is a question for the IP lawyers drafting the transaction. The notary deals with execution, not with whether the transfer is effective.

Counting originals

This is where costs are won or lost. If three offices each keep an original, you need three originals, each separately notarised and each separately authenticated for its destination.

Sign all the counterparts at one appointment. A notary attesting several counterparts of the same document in one sitting is doing routine work; recalling the signatories weeks later because a fourth office turned out to need an original is not. Order a spare if any country's answer was uncertain.

Each notarised counterpart then goes to DFAT: an apostille for countries in the Hague Apostille Convention — check each against the HCCH status table on the day — or authentication followed by legalisation at that country's embassy for the rest. A notary cannot issue an apostille. A counterpart bound for a non-Convention country takes longer, so start that one first.

Both parties sign, and both need authority evidence

An assignment is usually executed by the assignor and the assignee. Where both are companies, the notary needs the usual evidence for each Australian signatory: identification, evidence the company exists, and evidence the person may sign for it. The pages on board resolutions and certifying company records for a foreign registry cover that evidence.

If the assignee is overseas, its officers sign before a notary in their own country. Check that each IP office accepts an assignment executed in two countries under two notarial certificates. Most do, but it is worth confirming before the documents travel.

Names must match the register exactly

IP offices refuse to record transfers when the assignor's name does not match the owner shown on their register. Two situations cause most refusals:

• The owner changed its name after the rights were registered. The office will usually want evidence of the name change first, which for an Australian company means certified evidence of the change from the company register.
• The rights are held by a different group company from the one everyone assumed. Check the actual registered owner in each country before drafting.

Fixing either after the documents are notarised and apostilled means doing them again.

Powers of attorney for the local agent

Many offices require a power of attorney authorising the local agent to act. Some accept a general power already on file; some want a new one for each transaction; some want it notarised and authenticated. A notarised power of attorney can often be signed at the same appointment as the assignments, adding a notarial act but not an appointment.

Common questions

Does the notary check that the IP is validly transferred? No. The notary attests identity, authority and execution. Validity is for the IP lawyers.

Can one apostille cover all the countries? An apostille is accepted in any Convention member state, but each office that keeps an original needs its own original, and each original needs its own apostille.

What about recording the transfer in Australia? IP Australia sets its own requirements for recording a change of ownership. Check them directly; do not assume the foreign formalities apply.

The inventor is an individual assigning to our company. Is that different? The corporate authority evidence falls away on the assignor's side; the rest is the same.