Managing IP Records: 3 Key Elements of a Properly Managed Recordals Project

The importance of defining your goals in an IP recordals project cannot be overstated. Within those goals, you should always assess what must happen quickly—and what can wait. If you have recently acquired another company, for example, you will likely need to prioritize ownership information related to the newly acquired assets before you look at your existing portfolio.  

Similarly, there are jurisdictions in which your business is probably more active or where it faces more threats from competitors or counterfeiters. It makes sense to establish where the risk of failure is highest and prioritize your recordal projects accordingly.  

All recordal projects require a budget, and with large portfolios across multiple jurisdictions, costs can add up very quickly. These costs include any official fees associated with changes to the record, the cost of engaging agents where necessary to file official documents, and the various internal costs associated with the time and resources required to manage and complete IP recordals projects.  

There are also various hidden costs, such as translating documents into local languages where required, aligning customs recordals to ensure those are up to date, and the costs of legalizing documents. And of course, there will be costs associated with any errors or oversights, such as late filings. Some jurisdictions enforce strict deadlines for recording changes in ownership information, and failure to meet these can cost money, while also putting assets at risk.  

Understanding the nature and size of these costs will help you manage your IP recordals project more effectively. Once you have analyzed the size of the task, you may decide to undertake only a partial recordals project, in which you deal with the critical assets and leave the rest until you can justify more investment. However, be warned that, while this approach may be faster, it is likely to cost more in the long term, while also exposing you to greater risk (read more about the risks of delaying IP recordals).  

While the initial investment may be higher than doing things piecemeal, there are substantial savings available in the aggregate if you have a well-planned IP recordals project. It also has the advantage that, once the project is complete, you can be sure all your assets are up to date, delivering a platform from which to manage rights and recordals into the future.  

While it is certainly possible to manage a trademark recordal project in-house, it is likely to be time-consuming and resource-intensive. Not only that, but assigning staff resources to manage a recordals project takes them away from their other responsibilities. Once your recordals project gets to a certain size, it will make sense to engage an external partner. This has the advantage of taking the day-to-day work off your desk, while also giving you the peace of mind that comes with knowing you have a partner with substantial experience in managing recordals projects.  

Experience with companies like yours and in your industry is one of the main things you should look for in an external provider, but there are other key elements to consider. One of the most challenging parts of a recordal project is ensuring that your own record-keeping and docketing are up to date and clean. When you choose an external partner, you must be certain that they can provide you with the data you need in the format you require. In some cases, this can be achieved by giving the partner access to your systems, but if not, you need to know that bulk data or document upload is possible.  

Finally, if you are going to work with an external provider, you need to trust them to do the job you want them to do for a cost that you are comfortable with. That means knowing who you are working with and probably liking them too! At Questel, we will consult with you every step of the way to ensure you are comfortable with the relationship and workflow, and to make certain that your trademark and patent recordals projects are achieving what you need them to.