Patent Assignment refers to the transfer of patent rights from the patent holder to another party through a contractual agreement, in which the assignee pays the agreed-upon consideration.
The following outlines the specific procedures and legal requirements for patent assignment:
I. Legal Basis for Patent Right Assignment
According to Article 10 of the Patent Law of the People's Republic of China, both patent application rights and patent rights may be assigned. If a Chinese entity or individual intends to assign a patent application right or patent right to a foreign individual, foreign enterprise, or foreign organization, the assignment must comply with relevant laws and administrative regulations.
A written contract must be executed between the assigning party and the receiving party, and the assignment must be registered with the State Council’s Patent Administration Department (China National Intellectual Property Administration, CNIPA). The assignment becomes effective upon registration and publication by the CNIPA.
II. Procedures for Patent Right Assignment
1. Execution of an Assignment Contract
· The assignor (patent holder) and assignee (recipient) must sign a written contract.
· The contract should clearly define:
o Scope of rights being assigned
o Payment amount and method
o Timeframe for payment
o Rights and obligations of both parties
2. Preparation of Application Materials
The following documents must be submitted:
· Application for Bibliographic Changes
o This form records details of the patent right assignment.
· Assignment Contract
o The contract must include:
§ Names and addresses of both parties
§ Number of patents being assigned
§ Patent details (name, number, application date, grant and publication date)
§ Type and duration of any associated licensing rights
· Identification Documents
o Business license or identity verification documents of both parties (e.g., company registration certificate, national ID, etc.).
· Other Supporting Documents
o A copy of the patent certificate, if required.
3. Submission of the Application
Applications can be submitted through three methods:
(a) Online Submission
· Visit the CNIPA System: https://cponline.cnipa.gov.cn
· Follow the steps for "Patent Right Assignment Registration"
(b) In-Person Submission
· The applicant can submit materials at local CNIPA service centers (e.g., Patent Agency Offices).
(c) Submission by Mail
· Materials must be mailed to the local CNIPA service office.
· The envelope must be clearly marked "Assignment Registration".
4. Examination and Registration
· Formal Examination:
o CNIPA reviews whether the submitted documents are complete, lawful, and valid.
· Publication:
o If the application passes examination, the CNIPA will publish an assignment notice on its official website.
o The public notice period is generally one month.
o If no objections arise or objections are deemed invalid, the assignment is considered effective.
· Issuance of Assignment Certificate:
o Once the public notice period ends, CNIPA completes the registration of the patent right transfer.
o The Patent Right Assignment Certificate is issued to both parties.
III. Important Considerations
1. Due Diligence on the Parties
· Both parties should conduct due diligence on each other’s:
o Financial status
o Creditworthiness
o Legal capacity to sign and perform the contract
2. Defining Authorization Clauses Clearly
· Ambiguities in licensing terms should be avoided:
o If the license contract only states "manufacturing" and "use," does it implicitly include sales rights?
o If only "use" is mentioned, does it include manufacturing rights?
o Such unclear terms may lead to disputes between the parties.
3. Signing a Confidentiality Agreement
· Before entering into negotiations, both parties should sign a Non-Disclosure Agreement (NDA) to prevent trade secrets from being disclosed.
4. Validity of the Patent License Agreement
· Ensure that:
o The patent right is legally valid
o The assignor is the legitimate patent owner
o If the patent is co-owned, consent from all co-owners is obtained
o All official fees related to the patent have been paid
5. Assignor’s Special Obligations
· The assignor may be required to:
o Provide technical documentation for patent implementation
o Offer necessary technical support
o Guarantee the integrity of the assigned patent right
o Fully disclose prior implementation history of the patent before contract execution
IV. Effective Date of Patent Right Assignment
· The effective date of the patent right assignment is the date of registration with the CNIPA.
· As per Article 10 of the Patent Law, the assignment must be:
o Executed in writing
o Registered with CNIPA
o Published by CNIPA
· The assignment is legally effective from the registration date.
By following these procedures and legal requirements, patent holders can successfully complete the assignment process, ensuring legal validity and protection of the transferred rights.