1.0 Introduction
Patents for an invention are intellectual property that can be sold, licensed or used to negotiate funding, venture capital or other forms of financing. While it is not mandatory for applicants or patentees to record a transfer or a change of name with the Patent Office, there are benefits to doing so in a timely manner. It allows the Patent Office to issue patents to the correct owners of the rights accorded by the patent and maintain accurate records. It also ensures that the Patent Office’s records are up to date for third parties to easily recognize who owns the rights to the invention.
The Office recommends that persons submitting requests under these sections use the provided formFootnote 1. This will help ensure that all the necessary information is provided and will expedite the processing of these requests.
2.0 Recording a transfer
A patent grants the patentee and the patentee’s legal representatives the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. Those rights are established at the filing date when the applicant(s) make a claim to those exclusive rights through the patent application. The subsequent transfer of those rights from one applicant/patentee may be recorded by the Commissioner following a request under section 49 of the Patent Act. Note that the effective date for the recordal is the date when the Commissioner records the transfer and not when the request is submitted to the Patent Office.
2.1 Request to record a transfer
In order to record a transfer, the submission must contain:
- the request to record the transfer
- the name and the postal address of the transferee
- payment of the $100.00 fee
2.1.1 Request to record a transfer by applicant or patentee
If a request to record a transfer is submitted by the applicant or the patentee, the Commissioner will record the transfer without additional required evidence (subsections 49(2) and (3) of the Patent Act). For more information on who can represent the applicant or patentee, please refer to the draft MOPOP document on Representation.
2.1.2 Request to record a transfer by the transferee
If a request to record a transfer is submitted by the transferee (and not the currently recognized applicant or patentee), the transferee will need to provide evidence of the transfer to the Commissioner (subsections 49(2) and 49(3) of the Patent Act). A copy of the document effecting the transfer of rights along with an affidavit or one of the examples of evidence provided below would be considered satisfactory:
- A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
- An affidavit or signed statement from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
- The signature of a witness or the presence of a corporate seal on the document effecting the transfer;
- A document showing that the transfer was registered in a patent office of another country.
Please note that the request and any evidence submitted will be placed on file and be open to public inspection as required under section 10 of the Patent Act.
For more information on who can represent the transferee, please refer to the draft MOPOP document on Representation.
2.2 Recordal certificate
Once the Commissioner has recorded the transfer, a certificate with a unique identification number will be sent to the person who requested the recordal of the transfer.
2.3 Removal of transfer recording
The Commissioner will remove the recording of the transfer of an application or a patent upon receipt of evidence satisfactory to the Commissioner that the transfer should not have been recorded.
3.0 Recording a name change
Changes of name that do not change the identity will be recognized on the request of the applicant or patentee. Changes of name are distinct and separate from the correction mechanisms for applicants under the Patent Rules. For more information on correction mechanisms, please refer to the draft MOPOP document on Corrections.
3.1 Request to record a name change
In order to record a change of name, the submission must contain:
- request to record the change of name
- payment of the $100.00 fee.
For more information on who can represent the applicant or patentee, please refer to the draft MOPOP document on Representation.
3.2 Certificate of a name change
Once the Commissioner has recorded a change of name, a certificate with a unique identification number will be sent to the person who requested the change of name.
4.0 Registration of related documents
Any person may submit a request to the Commissioner to register a document relating to a patent application or patent (section 125 of the Patent Rules). Note that the registration of a document is a separate mechanism than the recordal of a transfer. Registration of a document which effects a transfer or which documents a change of name will simply put that document on file at the Patent Office. It will not be treated as a recordal request.
4.1 Request to register a document
In order to register a document, the submission must contain:
- A request to register a document
- The document to be registered
- Identify the patent application or the patent to which it relates (number), and
- Payment of the $100.00 fee
4.2 Certificate of registration of a document
Once the Commissioner has registered a document, a certificate with a unique identification number will be sent to the person who requested the registration of the document.