by Anna Popova, Director IP Recordals, Brandstock
Mention recordals to most in-house IP lawyers and the invariable response is, understandably perhaps, one of fear and loathing; fear of what can go wrong and loathing of the demands placed on time and resources. The sheer number and variety of documents required and the logistics involved in liaison with local agents can be daunting. Then there is the ‘long tail’ of recordals (some can take as long as 14 years to complete) when inevitable staff changes can spell disaster. Recordals projects present some mighty challenges that even the most seasoned project manager would do well to approach with caution.
Recording changes in ownership, including name changes, matters for a number of obvious reasons including:
Pending applications and renewals may be adversely affected
Civil and other enforcement actions (including customs recordals) may be prejudiced
Rights in trademarks may be compromised where there are licences in place
Cost is an ever-present concern and apparent savings from selective recordals can prove far costlier in the long run, even though financially or politically expedient in the short term. From the very start it is important to be able to predict and budget for expenditure accurately and transparently; this alone can be a huge task if handled in-house as enquiries have to be made with local agents just to get that information together; something that can take weeks, if not months.
However efficient your process not everything can, or need be, done at once. It is advisable to set priorities and to formulate what we like to call ‘priority buckets’ into which you place countries that should be addressed first, whether because they are more commercially important; because there are pending issues in those markets that require urgent attention; or because local procedural/regulatory rules make early commencement essential. Managing priorities is a risk management call and so there are no hard and fast rules; experience and a close understanding of business needs is of paramount importance.
Maintaining an accurate and up to date record of what has been done in your IP management system is of course crucial. The time honoured principle of ‘rubbish in, rubbish out’ is a persistent reality and making sure that relevant documents (usually stored in PDF) are also available. It is not always possible for service providers to enter data direct into a management system (indeed some software providers prohibit it), however there are ways in which bulk transfer of data and / or documents can be achieved reliably.
Recordals is perhaps best thought of as a combination of science and art: it requires knowledge; experience and, at times, no small amount of creativity.
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