Intellectual property (IP) recordals are integral in ensuring that the details of IP are correctly maintained and that owners can exploit their rights freely. Consulting IP professionals for advice on a recordals project is the most effective way to ensure its successful completion. However, owners regularly request some irregular things for IP recordals.
Some of the most common requests for IP recordals generally concern the recordal not being completed wholly or promptly. Such a decision often leads to the owner encountering difficulties with the IP later on.
It is therefore advised that companies looking to undergo an IP recordal project steer clear of these most common irregular requests to avoid running the risk of falling into the traps that they open up.
1) Delayed recordal
Many companies prefer the concept of delaying recordals until a later date, for example, waiting until an assignee’s rights are due to be given effect before updating any records. It is common for companies to not get the task ‘out of the way’ at the outset but instead look to delaying the process as long as possible.
Although the rationale behind such thinking is that a delay will save resources, this is not the case. Choosing to postpone IP recordals until absolutely necessary often makes the process more difficult than simply undertaking the changes at the outset, and is likely to cost more in both agent and official fees.
2) Waiting until renewal
Similarly, it is common for owners to wish to wait until the renewal date before beginning the recordal project, also in the hope of saving resources. However, again, requesting that the recordal wait until the renewal can lead to great difficulty, and may diminish the protection afforded to the IP.
Indeed, it is always advised that companies are looking to make changes to their IP records or dockets do not delay their requests for recordals for any reason, as doing so can jeopardise the IP rights. Despite such delays being a common request for IP recordals, most IP experts will vouch that choosing to wait for either the renewal or any other event is unnecessary.
3) Selective Intellectual Property assets
As well as looking to delay the process, it is also common for owners of IP to look to only undertake an IP recordals project with selective IP assets. Doing so, again, is thought to save both time and money, as the volume of IP involved in these changes is less.
However, choosing to only update the details for some IP and not others can have disastrous effects, particularly in the case of associated trademarks and so-called ‘all or nothing’ territories. For example, if looking to change the name under which the IP is registered, some territories require this same change to be filed for all IP assets under the owner – the recordal cannot be selective.
Though it is understandable that companies would commonly look to limit the number of IP assets involved in the recordals project, requesting that only select assets are involved have the potential to backfire.
4) Selective territories
In line with requesting that only select IP assets be included, it is also common for companies to look to limit the number of territories in which the updates take place.
Commonly, when requesting external assistance with a recordal, many companies find it prudent to focus on territories where their IP is currently active. For example, if there are ongoing legal proceedings, license agreements or filing applications for new IP, then it is common for the owner to look to focus on these territories.
Although it is advised that owners undergoing a recordals project focus primarily on currently active territories, these should not be the only territories in which the updates are filed. Rather, it is common for selective territories to be at the forefront IP recordals, but all other territories should be included in the recordals project, it is just prudent to focus on active territories first.
5) Missed deadlines
Finally, many owners unknowingly request IP recordals after relevant deadlines have passed. Many national IP offices impose time windows within which changes to any relevant details must be filed. Failure to meet these deadlines will result in payment of a late fee.
Obviously, missing these time-frames and incurring late fees is not something that owners would wish to do, and it is therefore wise to ensure that you are fully aware of any time constraints before undertaking an IP recordal.