Intellectual Property Laws confer upon its owner(s), named sometimes also as proprietor or holder or assignee, some exclusive rights which could be used for commercial benefits.
For example, the patent holder has the exclusive right to manufacture, use, sell and/or distribute the patented product.
In the case of trademarks, the owner has the right to sell, distribute, make derivates of that product and/or services, etc., for that particular brand name.
Also, for industrial designs, the owner has rights, and if there are changes in the name or legal address, these must be recorded.
However, these rights can be enjoyed by a different person other than the owner only in the case where the owner(s) has transferred his/her IP rights through exclusive or non-exclusive License or Assignment. For example, suppose a brand owner wants to outsource the manufacturing to another manufacturer in a certain territory or jurisdiction. In that case, he could get the rights to manufacture the product or service by entering into a license agreement with the trademark/brand owner. Whereas in an assignment agreement, the intellectual property rights and the right to use it commercially are transferred to another party, the original owner now holds no interest in the subject matter but to earn a certain fee (royalty fee).
To transfer intellectual property such as patents, trademarks and designs, etc., from one owner to another through the IP Recordal process. Moreover, the IP Recordal process records the changes of the present ownership to the new IP ownership. Thus, it is a process whereby the transfer of Intellectual Rights over property is officially registered in the respective IP National Offices.
In most of the Countries or IP Jurisdictions, for the change of name of a new owner(s), a Power of Attorney must be signed.
Recordal is done to solidify the assignee’s possession of the IP rights. Moreover, when filing a patent, trademark or design, the owner’s name and details are recorded similarly in case of change of ownership, such details have to be officially recorded.
In some Countries also, a License granted to a third party must be recorded.
To record the patents rights, according to Section 4 and Article 33 of the Swiss Federal Act for the transfer of the ownership of the patent, an assignment of a patent should be evidenced in writing and signed by the assignor. The assignee gets to exercise the rights only after this transfer has been recorded in the Patent Register. The Deed of assignment, which must be written in one of the Swiss national languages (German, French or Italian) or in English, is filed and recorded to confirm the following rights:
- The right to the grant of the patent and the right to the patent passes to the heirs; these rights may be assigned to third parties either wholly or in part.
- Where two or more persons own the said rights, each entitled person may exercise the rights only with the consent of the others; however, each one may independently dispose of his part or bring an action for infringement of the patent.
- The transfer of a patent application and the patent by the legal act is valid only if evidenced in writing.
- A patent may be transferred without the transfer being recorded in the Patent Register; however, until an entry is made, any action provided for in this Act may be taken against the former proprietor of the patent.
- Rights of third parties not recorded in the Patent Register are invalid against persons who have acquired the rights to the patent in good faith.
Moreover, in the case of modifications/recordals concerning trademark rights, according to Section 5 and Article 17 of the Swiss Federal Act on the Protection of Trademarks and Indications of Source, an assignment of trademarks should be evidenced in writing and signed by the assignor. The assignee gets to exercise the rights only after this transfer has been recorded in the Trademark Register. The Changes made to Trademark Registry are free of charge (i.e. no official taxes are due), but the intervention of a local representative is required.
- In the assignment, the proprietor may assign their trademark in whole or in part for the goods or services for which it has been claimed.
- The assignment is only valid if evidenced in writing. It is only effective for third parties acting in good faith once it has been entered in the Register.
- Actions under this Act may be brought against the previous proprietor up to the entry of the assignment in the Register.
- Unless otherwise agreed, the assignment of an undertaking also includes the assignment of its trademarks.
Lastly, the Swiss Federal Act on the Protection of Designs (Designs Act) also requires that Design assignments should be recorded in writing, The assignee gets to exercise the rights only after this transfer has been recorded in the Designs Register. Thus, apart from registration and filing of IP and their timely renewal, another obligation of the IP owner is to ensure that in case of transfer, there is a recordal evidencing the transfer.
When it comes to the IP Recordals in Switzerland, one can get assistance from Oriti Patents, Lugano, CH. One can avail Franco Oriti help by filling in the webform (it takes two minutes) in Iprecordals.ch, enclosing the Power of Attorney in pdf (downloadable from said website) and paying a professional fee of CHF 220.00 for one recordal or multiple recordals on the same list.
Iprecordals.ch offers a cost-effective solution and is an easy, transparent, multiple and secure online tool to make the IP recordals process smooth for patent, trademark and design holders. It is mandatory to submit a Power of Attorney at least for said recordal only or to become the new local representative; in any case, it will be sent to the Swiss Federal Institute for Intellectual Property so that Bern may proceed with the change only or also may advise in the future Oriti Patents if he becomes the new local representative.
Taking over-representation of IP in Switzerland is a free service of Oriti Patents which may become your local office for handling all IP matters in Switzerland, such as filings, renewals, refusals, oppositions, etc. and which may also become the address for service for all operations relating to the change of name and/or the change of address of patents, trademarks and designs, working before the Swiss Federal Institute of Intellectual Property (IFPI) based in Bern.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.