Intellectual Property Records: Avoid these 5 Common Irregular Requests for Recordals

Many companies prefer the concept of delaying intellectual property record updates until a later date; for example, waiting until an assignee’s rights are due to be given effect before updating any records. Rather than getting the task out of the way, it is common for companies to delay the process as long as possible.

Although the rationale behind such thinking is that a delay will save resources, this is rarely the case. Choosing to postpone IP recordals until the last moment often makes the process more difficult than simply undertaking the changes at the outset—and is likely to cost more in both agent and official fees.

Similarly, it is common for owners to want to wait until the renewal date before beginning their recordal projects, also in the hope of saving resources. However, requesting that the recordals wait until the renewal can lead to difficulty and may even diminish the protection afforded to the IP.

Ideally, companies looking to make changes to their intellectual property records or dockets should not delay their requests for recordals, as doing so can jeopardize IP rights. Despite such delays being a common request for IP recordals, most IP experts will vouch that choosing to wait for either the renewal or any other event is unnecessary.

Alongside delaying the process, it is also common for owners of IP to undertake an IP recordal project with only selected IP assets. Again, the idea is that it will save both time and money, as the volume of IP involved in these changes is less.

However, choosing to update the details for only some IP could have disastrous effects. This is particularly the case with associated trademarks and so-called ‘all or nothing’ territories. For example, if looking to change the name under which the IP is registered, some territories require this same change to be filed for all IP assets under the owner—the recordal cannot be selective.

While companies would understandably look to limit the number of IP assets involved in the recordals project, requesting that only select assets are involved has the potential to backfire.

Along with requesting that only select IP assets be included, it is also common for companies to look to limit the number of territories in which the updates take place.

Typically, when requesting external assistance with an intellectual property record update, many companies find it prudent to focus on territories where their IP is currently active. For example, if there are ongoing legal proceedings, license agreements, or filing applications for new IP, then it is common for the owner to focus on these territories.

Although it is advised that owners undergoing a recordals project focus primarily on currently active territories, these should not be the only territories in which the updates are filed. While it is prudent to focus on active territories first, all other territories should also be included in the recordals project.

Finally, many owners unknowingly request IP recordals after relevant deadlines have passed. Many national IP offices impose time windows within which changes to any relevant details must be filed. Failure to meet these deadlines will result in payment of a late fee.

Obviously, missing these timeframes and incurring late fees is not something that owners would wish to do. Therefore, it is wise to ensure that you are fully aware of any time constraints before undertaking an IP recordal.