Patent transfer contract and important terms

Patent transfer contract is a document used to transfer an invention from the owner to another individual or organization. The creation of a patent transfer contract must comply with the provisions of intellectual property law to ensure legality and effectiveness. In this article, we will learn about patent transfer contracts and important terms.

What is a patent assignment?

Patent assignment is a transaction whereby the owner of a patent (assignor) transfers ownership of his or her invention to another party (assignee). This transaction is carried out based on the agreement between the two parties and must comply with the provisions of law on intellectual property.

Sample patent transfer contract and terms

Although the law does not stipulate a mandatory patent transfer contract form, the contract must fully meet the contents prescribed in Article 140 of the Law on Intellectual Property 2005 (amended and supplemented in 2019):

• Names and addresses of the parties;
• Transfer basis;
• Subject of transfer;
• Transfer price;
• Rights and obligations of the parties.

In addition to the above mandatory contents, a patent transfer contract may also include other provisions such as:

• Validity period of the contract;
• Liability to compensate for damage;
• Dispute resolution methods;
• Privacy terms.

Customers can refer to the latest patent transfer contract below:

>>> Download: Patent transfer contract.

Procedures for registration of patent transfer

Registering an invention transfer contract with the Vietnam Intellectual Property Office is a mandatory procedure for the law to recognize the validity of the transfer.

File

According to Article 58 of Decree 65/2023/ND-CP, the patent transfer contract registration dossier includes:

• Registration declaration Form No. 01 in Appendix IV of Decree 65/2023/ND-CP).
• 01 original or certified copy of the patent transfer contract. If the contract is made in a language other than Vietnamese, it must be accompanied by a translation of the contract into Vietnamese; If the contract has many pages, each page must have the parties’ signatures or seals;
• Original certificate of protection in case the certificate of protection is issued in paper form;
• Written agreement of the co-owners on the transfer of the invention, if co-owners;
• Authorization document (in case the request is submitted through a representative);
• Copy of fee and charge payment voucher (in case of payment of fees and charges via postal service or direct payment to the account of the state management agency on industrial property rights).

Procedure

One set of dossiers to register an invention transfer contract can be submitted to the National Office of Intellectual Property in one of the following forms:

• Submit online: on the application receiving system of the National Office of Intellectual Property.
• Submit directly: At the Intellectual Property Office headquarters in Hanoi or the Department’s Representative Office in the City. Ho Chi Minh and Da Nang.
• Submit by post: Send documents to the Intellectual Property Office headquarters in Hanoi or the Department’s Representative Office in the City. Ho Chi Minh and Da Nang.

The state management agency for industrial property rights will review the dossier and perform the following tasks:

If the profile is valid:

• Make a decision to record patent transfer.
• Record the new owner in the protection certificate.
• Record the transfer in the National Register of Industrial Property.
• Announce the decision to record the transfer in the Industrial Property Official Gazette.

If the profile has errors:

• Notice of intention to refuse registration, clearly stating shortcomings and setting a period of 02 months for correction.
• Issue a decision to refuse registration if repairs are not made or repairs do not meet requirements.

Consulting services, drafting professional patent transfer contracts

To ensure your rights, customers should use Long Phan’s professional patent transfer contract drafting and consulting services. Our Services include:

• Consulting on patent transfer conditions;
• Consulting on benefits and risks when transferring patents;
• Provide a standard transfer contract template with full content;
• Drafting a complete and strict patent transfer contract, maximally protecting the interests of customers;
• Consulting and guidance on preparing patent transfer registration documents;
• Consulting on patent transfer registration procedures;
• Consulting on dispute resolution related to patent transfer contracts (if any);
• Consulting and answering other related issues.

>>> Reference: Consulting on drafting industrial property transfer contracts.

A patent assignment contract is a transaction, requiring an understanding of intellectual property law and contract drafting skills. Please contact Long Phan via the hotline: 0906735386 for professional advice and support, ensuring your legal rights and success for your patent transfer transaction.