Notarial Requirements When Transferring Intellectual Property

When a company transfers patents, trade marks or designs registered overseas, each foreign IP office sets its own formalities for recording the new owner. Some accept a simple signed assignment. Others want the assignment, or a power of attorney for the local agent, notarised and then apostilled or legalised. Ask each office's local attorney before anyone signs.

Key takeaways

• Recording a transfer is done office by office. Until it is recorded, the register may still show the old owner.
• Ask the local IP attorney in each country what their office needs. Put the answers in one table before anything is signed.
• A short-form assignment per country often keeps the commercial terms off public registers.
• Every office that keeps an original needs its own notarised counterpart, and each counterpart needs its own DFAT certificate.
• The assignor's name must match the register exactly. A mismatch means doing the documents again.

Why does an IP transfer need recording overseas?

A sale of the business, a group restructure, or moving IP into a holding company all transfer ownership between the parties. The registers do not update themselves. Each IP office where the rights are registered has to record the change. Until it does, the register may still show the old owner.

That matters in practice. The new owner may struggle to renew a registration, license it, or enforce it against an infringer while the register names someone else. Some offices also treat an unrecorded assignment as ineffective against third parties. How much it matters depends on the country, which is a question for the local attorney.

So a portfolio registered in eight countries is eight recording jobs. Each has its own formalities, and they differ more than people expect. The same assignment can be light in one country and heavy in the next.

What should you ask each foreign IP attorney first?

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

• whether their office needs the full assignment, a short-form confirmation, 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 or accepts a copy;
• whether it must be in their language, or bilingual.

Put the answers in a table, one row per country. That table decides how many documents, originals and authentication steps you need. It usually shows that only some countries need a notary at all. Working without it is how companies end up recalling directors for a second signing.

Why use one agreement and several short-form assignments?

A common approach in multi-country transfers is to sign a main agreement with the commercial terms. Separate short-form assignments are then signed for recording at each office. A short form identifies the rights and the parties and confirms the transfer. It leaves out the price and the rest of the deal.

There are two practical reasons. 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 forms suit your transaction, and how they relate to the main agreement, is for the IP lawyers drafting it. The notary deals with execution. The notary does not decide whether the transfer is effective, and does not certify that the contents are correct. See what a notarial certificate proves.

How many originals do you need?

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

1. Count the offices that keep an original, from your country table.
2. Add one spare for any country whose answer was uncertain.
3. Prepare that many counterparts, each marked for its country if the attorneys prefer.
4. Sign them all at one appointment, before the same notary.
5. Send each counterpart to DFAT for the certificate its country needs.

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 needed an original after all, is not.

What happens at DFAT?

An Australian notary cannot issue an apostille. Only DFAT can. Each notarised counterpart goes to DFAT, which authenticates the notary's signature and seal. It does not check the assignment's contents.

For a country that is a party to the Hague Apostille Convention, DFAT issues an apostille. Check each country against the HCCH status table on the day, because membership changes. For a country that is not a member, DFAT issues an authentication certificate. That country's embassy or consulate then legalises the document. See our apostille and authentication page.

One apostille does not cover several countries. An apostille is accepted in any member state, but it is fixed to one original. Two offices that each keep an original need two originals, each with its own apostille.

What evidence does the notary need from each company?

An assignment is usually signed by both the assignor and the assignee. Where both are companies, the notary needs the usual evidence for each Australian signatory:

• original photo identification for each person signing;
• evidence that the company exists, such as a current ASIC extract;
• evidence that the person may sign for it, such as the constitution or a board resolution.

Some foreign offices also want the notary to certify the signatory's authority in the certificate itself. Tell the notary in advance, because that needs more evidence than a bare signature witnessing. Our pages on board resolutions and 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 confirm it before the documents travel.

Why must names match the register exactly?

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

• The owner changed its name after the rights were registered. The office usually wants evidence of the name change first. For an Australian company, that means certified evidence from the company register.
• A different group company holds the rights from the one everyone assumed. Check the registered owner in each country before drafting.

Small differences count too, such as "Pty Ltd" against "Proprietary Limited", or a missing comma. Fixing any of this after notarising and apostilling means doing the documents again. An ASIC document recording a name change can often go to DFAT directly. DFAT lists government commercial documents on its page of documents it can legalise.

What about 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 like the assignment.

A notarised power of attorney can often be signed at the same appointment as the assignments. That adds a notarial act but not another appointment. The attorney's own form usually has to be used. See powers of attorney and legal declarations.

What if the office wants its own language?

Some offices accept English. Others want a translation, or a bilingual document with both languages side by side. Ask the local attorney which. A bilingual document is often simpler, because the notary witnesses one document rather than an assignment plus a separate translation.

The signatory must understand what they sign. If a director cannot read the foreign text, the English column or a trusted translation must cover it. The receiving office decides whose translation it accepts. See NAATI translation with a notary.

Can a Justice of the Peace or a solicitor witness it instead?

For an office that only wants a signed document, any witness may do, or none at all. For an office that wants a notarised document, no. A Justice of the Peace is a volunteer witness for Australian purposes. A JP's signature is not recognised overseas and DFAT cannot apostille it.

A solicitor who is not a notary is in the same position for this purpose. DFAT authenticates signatures it holds on record, such as those of notaries and certain officials. The foreign IP office is the receiving authority, and it decides what it accepts. If its attorney says "notarised", plan on a notary.

Which documents usually need what?

Document	Usually needed for	Notary?
Main agreement	The parties' own records	Usually not
Short-form assignment	Recording at each office	Only where that office asks
Agent power of attorney	Letting the local agent act	Depends on the office
Name change evidence	Matching the register	Often not; DFAT directly
Recording in Australia	IP Australia's own register	Check IP Australia's rules

Here is an illustration, not a real case

A Brisbane software company moves its trade marks into a new holding company. The marks are registered in five countries. The attorneys report that two offices accept signed copies, two want notarised originals with an apostille, and one non-Hague country wants legalisation. The directors sign four counterparts, including a spare, at one sitting. The legalisation counterpart goes to DFAT first. The copy-only offices share one plain signed original.

In short

Ask each local attorney first and build the country table. Use short-form assignments where the lawyers agree. Count the originals, sign them all at one sitting, and send each to DFAT for its own certificate. Check names against every register. The notary attests execution; the lawyers decide validity. More on the notarial step is at document notarisation.

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Transferring IP registered overseas? Send us your country table, and we will explain each step before you book.