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Topics: Corporation, IP Recordals

IP Recordals - A Real Brain-Teaser for In-House Legal Teams

The process of an IP recordals project can be complex for in-house legal teams. It requires detailed and accurate information specific to the applicable countries and jurisdictions. The documentation required for changes to IP records can present challenges and fees that need to be considered. There are also other contributing factors to consider when managing IP records. 

In this article, we’ll take a look at the requirements for recordals and how in-house legal teams can effectively plan a recordals project.

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Firstly, you need to identify the potential situations that may prompt a requirement for an IP recordal filing. Whilst many businesses opt to file recordals when renewing their IP, there are other situations that may need an immediate filing. The main reason businesses opt to delay a recordal filing until an IP renewal is to reduce costs and simplify the paperwork.

If a recordal and a renewal timeline align well, delaying a change to IP records can be an effective way to manage your projects as it can reduce costs, e.g., filing fees. It can also reduce pressure on the in-house legal team as fewer recordals require less resources. However, in situations where the timelines do not align well, this may result in discrepancies between records, for example, incorrect details of the owner or trademark. This can result in detrimental legal and financial risk to a business, so it’s important to anticipate the potential risks and arrange your in-house legal projects accordingly.

An IP recordals project can be a time-consuming process, mainly due to the amount of detailed documentation required for the project. Preparing and organizing the paperwork required to alter IP records is challenging as it can differ between countries, regions and jurisdictions. It can also become costly as there are fees associated with different filings.

When your in-house legal team is undertaking a recordals project, it will need to establish a documentation system for preparing, collecting, filing and accessing paperwork in a timely manner. If an external IP management specialist is assisting with their recordals project, it may also need to assign power of attorney to external agents to ensure that IP recordals can be filed as efficiently as possible. This enables an external agent to act on their clients behalf, which can save a significant amount of time, especially with projects that have a high volume of documentation.

A key aspect of planning an IP recordals project is understanding the budget and resources needed to complete it. Considering the project from start to finish, this should include any preparatory, execution and maintenance work required. Whilst it may seem that preparing the IP recordal documentation is the bulk of the project, an in-house team may also need to monitor projects on an ongoing basis. For example, if the legal team is postponing a recordal until the IP renewal filing, but a change in business circumstances requires immediate action. Or, if a recordal has been filed and requires status monitoring for additional or updated paperwork. Having knowledge of local IP law in different regions can help you to foresee potential issues so you can plan and allocate the budget and resources required.

Filing an IP recordal with accurate paperwork and ensuring that it is accepted by the relevant authorities requires a heavy amount of administrative work. The resources needed to assess, execute and monitor the progress of a recordal filing is an important factor for an in-house legal team to consider when planning their project.

The main consideration for in-house legal teams with IP recordals projects is planning the timeline. This will provide an overview for the team of how their budget and resources can be allocated. The timeline should consider circumstances, such as specific application requirements in different countries, regions and jurisdictions. In this way, a timeline is an indicator for potential risks or issues that may require additional attention, so the team can be prepared for them, thus allowing for an expedited process. Additionally, a project timeline gives the team a realistic overview of the budget and resources required to complete the project. In this way, it can determine whether or not there is a need for an external IP specialist and where those resources may be most effective.

3 Main points to define the scope of your recordal project