When transferring, assigning, and licensing IP rights, certain documents are required

When transferring, assigning, and licensing IP rights, certain documents are required.

There are several reasons why an intellectual property owner may want to transfer these rights to someone else. However, the transfer of intellectual property rights is often a complex process and is regulated by laws and requirements of intellectual property agencies. So what documents are required When transferring, assigning, and licensing IP rights, certain documents are required?

What is the transfer of IP Rights?

The transfer of intellectual property rights is the process of transferring all or part of the intellectual property rights from the transferor (assignor) to the transferee (assignee). The transfer of intellectual property rights is typically carried out by signing a licensing agreement between the two parties. Intellectual property rights may include copyrights, trademarks, patents, industrial property rights, and industrial design rights.

Assignment of Intellectual Property Rights

The assignment of intellectual property rights is transmitting, transferring, or assigning all or part of the intellectual property rights from one party (assignor) to another party (assignee). The assignment of intellectual property rights is usually done by signing an assignment agreement. Intellectual property rights may include copyrights, trademarks, patents, industrial property rights, or industrial design rights.

When transferring, assigning, and licensing IP rights, the following documents are required

  1. For transfer:
  • Declaration form for recording transfer of trademark registration (typed according to form: 01-SĐĐ Appendix B of Circular No. 01/2007/TT-BKHCN).
  • Transfer documentation: This document should clearly state the name and address of the transferor and transferee, as well as the transfer number or sufficient information to identify the transfer.
  • Power of attorney: If the transfer request is submitted through a representative service organization, a power of attorney is required.

2. For assignment:

  • Intellectual property transfer contract: This contract must specify the information about the assignor, assignee, scope of intellectual property rights being assigned, value, and other related conditions regarding the assignment.
  • Intellectual property license: This document grants permission to use and license intellectual property rights.
  • Confirmation document of assignment: This is a document signed by the parties involved in the assignment to confirm the transfer and other related documents.

3. For licensing:

Patent/utility solution/industrial design/trademark licensing contract (except for famous trademarks) that is valid according to the agreement of the parties. The process and procedures for registering a licensing agreement are as follows: The dossier includes a declaration form, 2 original copies of the contract, a certified copy of the protective document, a business license (if it is a trademark), documents of fee payment, and a power of attorney (if required). The dossier is submitted to the Intellectual Property Office (within 60 days from the date of signing the contract, which can be extended for justified reasons). The Intellectual Property Office in Viet Nam will accept the dossier and make decisions: either not accepting the registration due to the contract violating content, form, or jurisdiction, or rejecting the registration with a written statement providing the reason and ensuring the right to appeal for the parties involved; or requesting amendments to certain provisions of the contract before registration. If the requirements are met, the office will accept and proceed with the procedures for registration of the licensing agreement.

Above is the article: “When transferring, assigning, and licensing IP rights, certain documents are required.” by GreenIP. Should you or anyone you know need help with this, feel free to contact us at our email: info@greenip.asia
Call/WhatsApp: (+84) 9 0228 3469
Thanks a lot.

Scroll to top