New requirements for the assignment and change of ownership of IP rights

At the time the Regulation was enacted, the INPI was experiencing approximately a two-year backlog in recording assignment or changes of ownership. As of the date of the Regulation, the Transfer of Technology Department of the INPI will be in charge of assignments and changes of ownership proceedings. According to the authorities, these new requirements will help to simplify the proceedings and reduce the existing delays.

The Regulation consolidated different pieces of legislation passed to date into a single legal norm, and also included new requirements, as follows:

1. Sworn Declaration: The information provided by assignor/assignees in the special change of ownership forms will be deemed as a sworn declaration. This new requirement will allow the applicant’s representatives to timely complete or rectify any missing non-essential information, thus avoiding delays due to objections raised by the Examiners.
2. Recording an assignment or change of ownership: It will be no longer necessary to submit the original certificate of registration or request a certified copy of the certificate of registration for endorsement purposes.
3. Consideration: The applicant must indicate the sum or consideration paid for the assignment or else indicate that the assignment has been made free of charge. If the assignment involves a consideration, the applicant must specify the amount paid for. If the sum or consideration cannot be determined, the applicant must explain the reasons why this information has not been produced.

The Regulation has introduced some amendments which may result in a more burdensome proceeding. We consider, however, that the Regulation may help the INPI to reduce the existing delays, and owners will benefit by having the changes of ownership recorded in a reasonable time-frame.

For more information, please contact:

		Sergio M. Ellmann
		Juan M. López Mañán