Latest procedures for transferring intellectual property rights

Procedures for transferring intellectual property rights is the transfer of ownership rights to intellectual property objects from the owner to another organization or individual. The procedure to carry out this transfer includes specific steps, requiring strict compliance with the provisions of law. The article below by Long Phan will provide detailed information about procedures for transferring intellectual property rights.

What is intellectual property transfer?

Transferring intellectual property rights is the transfer of part or all of his or her ownership of the intellectual property object by the right owner (assignor) to another organization or individual (assignee).

Subjects of transferring intellectual property rights: Including copyright, rights related to copyright, industrial property rights (inventions, industrial designs, trademarks, geographical indications, trade names, business secrets) and rights to plant varieties.

Procedures for transferring intellectual property rights

Procedures for transferring intellectual property rights depend on each type of intellectual property object. Below are the specific transfer procedures:

Procedures for renewing certificates of copyright and related rights when transferring

When transferring copyright, the new owner needs to carry out procedures for renewing the copyright registration certificate. This renewal procedure is specified in Clauses 2 and 3, Article 41 of Decree 17/2023/ND-CP.

Exchange documents include:

• Declaration for registration of copyright and related rights;
• 02 copies of the work, performance fixation, audio recording, video recording, broadcast program;
• Authorization document to submit documents (if any);
• Original Certificate of registration of copyright and related rights with a copy of the work, fixation of the performance, sound recording, video recording, broadcast program that has been stamped and recorded with the number of the Certificate of registration of copyright and related rights.

Documents submitted to the Copyright Office.

Processing time is 12 working days from the date of receipt of complete and valid documents. However, the exchange and return of documents will be refused if they fall into one of the following cases:

• Detecting changes in the content of works, performances, audio and video recordings, or broadcast programs compared to the granted content;
• Cases as prescribed in Points b, c and d, Clause 2, Article 39 of Decree 17/2023/ND-CP.

Procedures for registering industrial property transfer contracts

To register an industrial property transfer contract, it is necessary to comply with the provisions in Clause 1, Article 58 and Article 59 of Decree 65/2023/ND-CP:

Prepare documents

Profile includes:

• Declaration for registration of industrial property transfer contract according to form 01, Appendix IV of this Decree;
• Industrial property rights transfer contract (original or certified copy);
• Original certificate of protection if the certificate is issued in paper form;
• Written consent of co-owners (if any);
• Authorization document (if any);
• Copy of fee payment voucher;

For dossiers for registration of collective mark transfer contracts or certification marks, in addition to the documents mentioned above, the following documents are required:

• Regulations on the use of collective marks and regulations on the use of certification marks of the Transferee;
• Documents proving the transferee’s right to file applications for certification marks or collective marks.

Implementation procedures

Implementation procedures include the following steps:

Step 1: Submit application

Submit documents directly or by post to the Intellectual Property Office headquarters in Hanoi or 2 representative offices of the Department in City. Ho Chi Minh and Da Nang.

Step 2: Processing documents

In case the registration dossier is not incomplete:

• The National Office of Intellectual Property issues a decision to record the transfer of industrial property rights;
• Recorded in the new owner’s Protection Certificate; In case of transferring a part of the list of goods and services bearing a protected trademark, issue a new Trademark Registration Certificate to the receiving party and determine the limit of the list of goods/services in the original Protection Certificate for that transferred part;
• Recorded in the National Register of Transfer of Industrial Property Rights;
• Announce the decision to record the transfer of industrial property rights in the Industrial Property Official Gazette.

In case the registration dossier has errors:

• The National Office of Intellectual Property issues a notice of intention to refuse to register the contract, clearly stating the shortcomings of the dossier so that the applicant can correct the shortcomings or give feedback on the intention to refuse to register the contract;
• Issue a decision to refuse to record the transfer if the applicant does not make corrections or the correction of errors is unsatisfactory, there is no objection or an unreasonable objection regarding the intention to refuse to register the contract within the set time limit.

Procedures for registration of transfer of rights to plant varieties

Procedures for registering transfer of rights to plant varieties are specified in Decree 79/2023/ND-CP specifically as follows:

Registration dossier includes:

• Declaration for registration of transfer of rights to plant varieties according to form No. 18 issued with Decree 79/2023/ND-CP;
• Plant variety ownership transfer contract (certified copy);
• Original copy of plant variety protection certificate;
• Written consent of co-owners (if any);
• Power of attorney (if any);

How to submit application:

Submit 01 set of documents directly or via postal service or via electronic environment to the Ministry of Agriculture and Rural Development.

Resolution deadline:

• Within 30 days from the date of receiving the complete dossier, the dossier will be appraised:
• In case the dossier is valid, the Ministry of Agriculture and Rural Development notifies in writing the transfer of ownership rights, records the transferee as the owner of the Plant Variety Protection Certificate, updates it in the National Register, issues the Plant Variety Protection Certificate and posts it on the Electronic Information Portal of the Ministry of Agriculture and Rural Development.
• In case the dossier is invalid, the Ministry of Agriculture and Rural Development will respond in writing to the organization or individual, clearly stating the reason.

Consulting services and guidance on transferring intellectual property rights

Long Phan Consulting Company provides consulting services and guidance on procedures for transferring intellectual property rights in a professional and effective manner. Our Services include:

• Consulting on subjects being transferred intellectual property rights;
• Consulting on conditions for transferring intellectual property rights;
• Consulting and guidance on drafting and reviewing the most accurate intellectual property transfer contracts;
• Consulting, planning negotiations, signing intellectual property transfer contracts;
• Consulting and support in drafting registration or renewal documents when transferring rights;
• Instructions on the order and procedures for transferring intellectual property rights;
• Representing customers to carry out procedures for transferring rights quickly and effectively;
• Consulting on dispute resolution (if any);
• Consulting and answering other related issues.

Frequently asked questions about intellectual property transfer procedures

Below are some answers to help you better understand the procedure for transferring intellectual property rights:

How long does it take to complete the procedure for transferring industrial property rights?

This time depends on the completeness and validity of the dossier. If the documents are complete and there are no problems, the processing will be faster. However, according to regulations, the time for the Intellectual Property Office to process documents is usually several weeks to several months.

Does an intellectual property transfer contract need to be notarized?

According to current regulations, industrial property transfer contracts need to be expressed in writing. Notarization or authentication is not required, but is recommended to increase the legality and safety of the transaction.

If a contract to transfer intellectual property rights is violated, how will it be handled?

The parties can resolve disputes through negotiation, conciliation or lawsuit in a competent court.

After transfer, does the transferee have the right to change the trademark?

The transferee has the right to use the trademark in accordance with the transferred protection title. If you want to change, you need to follow the procedures to amend the trademark according to regulations.

What are the rights of the transferor after completing the transfer procedure?

The transferor will receive the amount of money as agreed in the transfer contract and will no longer have ownership rights to the transferred object.

Transferring intellectual property rights needs to comply with legal regulations to ensure the legitimate rights and interests of relevant parties. If you encounter any difficulties during the implementation process, please contact Long Phan Consulting Company immediately via the hotline: 0906735386 for timely advice and support.