10. Assignment and Licensing
10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights
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:
- to allow the assignee to assert his or her right against third parties. The Patents Act is silent in this regard and does not explicitly state whether an exclusive licensee may collect damages in respect of an infringement that occurred prior to the date of recordation of the licence;
- failure to record may cause delay when immediate enforcement actions are required (since the right to file such actions is preserved only to the registered patentee/exclusive licensee) and such recordation is required prior to filing an action.