Contributed By Gilat, Bareket & Co., Reinhold Cohn Group
There is no legal obligation to record assignment agreements for registered patents or pending applications at the Patent Office. Failure to record such assignments does not influence the validity of the application or the patent granted thereon, nor does it have any bearing on the relationship between the parties to the agreement. Nevertheless, recording the change is recommended for a number of reasons, including the following:
The application for assignment may be filed by the assignee or by his or her legal representative.
According to an administrative directive issued by the Patent Registrar, the following documents will be required in order to record an assignment agreement at the Patent Office.
The Original Assignment Agreement or a Certified Copy Thereof
According to the directive, the assignment agreement must indicate the exact transaction, the date of the transaction, the signature of the assignor and a specific reference to the Israeli patent or patent application involved – identified by its official serial number. If the original agreement was not made in Hebrew, Arabic or English, a certified translation into one of these languages must be provided by an Israeli or foreign notary.
If the agreement is signed by a liquidator or trustee, it is necessary to submit the document evidencing the appointment of that person and his/her authorisation to sign on behalf of the legal entity for which he or she had signed the agreement.
If the agreement indicates that it is executed in accordance with or subject to the provisions of a previous agreement, it will be necessary to file an affidavit on behalf of the party requesting the records or his or her lawyer. It must state that the previous agreement does not include any provisions that may revoke or restrict the recordation of the requested change.
If the agreement includes confidential information, both an abbreviated version of the agreement, along with the duly notarised complete unabbreviated version may be filed. A request that the Patent Office clerk return the complete unabbreviated version may be made once the agreement is duly recorded so that the only document to remain on record will be the abbreviated version.
Alternatively, it is possible to file the abbreviated version of the agreement only, as long as the applicant explains to the Patent Office why certain parts were redacted, what the general content of these parts was, and confirm that these parts do not include any provisions that may revoke or restrict the recordation of the requested change.
If the application for assignment is requested following an order of a foreign court or a will (testament), the applicant must present a decision, order or ruling of an Israeli court or the Israeli registrar of wills in respect of the inheritance in order for the change to be executed.
A Duly Signed Power of Attorney in the Name of the Assignee, Indicating the Full Name and Address of the Assignee and the Date of Signature
No legalisation or notarisation of the signature is required. Furthermore, it is not necessary to file the original form or a certified copy thereof (a simple copy will suffice).
Costs for recording an assignment: there is an official fee of approximately USD70. Professional fees vary significantly.
The Patentee may give an exclusive or non-exclusive written licence to exploit the invention. An exclusive licence confers the exclusive right to act as if the licensee were the patentee, and it prohibits the patentee from exploiting the invention in Israel. A non-exclusive licence confers the right to exploit the invention to the extent and on the conditions prescribed in the licence. A non-exclusive licensee does not have a right to file action for infringement.
The recording of licences for registered patents or pending applications is not mandatory under the Patents Act. Moreover, non-recording of the licence does not affect the validity of the patent (or patent application) involved, nor does it have any bearing on the relationship between the parties to the agreement. Nevertheless, a recording of an exclusive licence is required to assert such a licence against third parties. Therefore, a patent licence agreement that was not registered in the Patents Register is generally in effect only for the parties to the agreement.
The procedure for recording and licensing an agreement, as well as the cost involved, is similar to that of recording an assignment (see 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights).